Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`Plaintiff,
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`v.
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`FITBIT LLC,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-FDS
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`MEMORANDUM IN SUPPORT OF DEFENDANT FITBIT LLC’S MOTION FOR THE
`CONSTRUCTION OF THREE RELATED CLAIM TERMS
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 2 of 17
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`TABLE OF CONTENTS
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`Page
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`I.
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`THE TERMS MUST BE CONSTRUED TO DETERMINE NON-
`INFRINGEMENT AND INVALIDITY..............................................................................1
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`1.
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`2.
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`3.
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`Philips Believes That Claim 1 May Encompass An Unlimited Number Of
`Different Servers ......................................................................................................1
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`Fitbit Maintains That Claim 1 Is Limited To One Server ........................................3
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`When A Claim Construction Dispute Arises After The Original Claim
`Construction Process, The Court Must Construe The Disputed Term(s) ................5
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`II.
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`A CLAIM CONSTRUCTION PROCEEDING WILL NOT PREJUDICE
`PHILIPS ...............................................................................................................................7
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`III.
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`FITBIT COULD NOT HAVE RAISED THIS DISPUTE SOONER .................................7
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`1.
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`2.
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`3.
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`The Local Rules And Philips’ Objections Limited The Number Of Claim
`Terms Construed During The Initial Markman Proceeding ....................................8
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`Fitbit Did Not Expect A Dispute Over The Meaning Of The “Server”
`Terms Based On The ’377 Patent’s File History And Provisional
`Application ...............................................................................................................8
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`Philips Concealed The Existence Of A Dispute Over The Meaning And
`Scope Of Claim 1 With Respect To The “Server” Elements .................................11
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`CONCLUSION ..............................................................................................................................12
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 3 of 17
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015)......................................................................................... 10
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`In re Body Sci. LLC Patent Litig.,
`167 F. Supp. 3d 152 (D. Mass. 2016) ................................................................................. 6
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`Markman v. Westview Instrs.,
`517 U.S. 370 (1996) ........................................................................................................ 5, 7
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`MedIdea, L.L.C. v. DePuy Orthopaedics Inc.
`422 F. Supp. 3d 459 (D. Mass. 2019) ................................................................................. 5
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`MedIdea, L.L.C. v. DePuy Orthopaedics, Inc.,
` No. 1:17-cv-11172, 2018 U.S. Dist. LEXIS 190274, 2018 WL 5830849 (D.
`Mass. Nov. 7, 2018) ............................................................................................................ 6
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`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)........................................................................................... 5
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`Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`574 U.S. 318 (2015) ............................................................................................................ 7
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`35 U.S.C. § 112 ............................................................................................................................... 1
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`STATUTES
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 4 of 17
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`Defendant Fitbit LLC (“Fitbit”) requests that the Court resolve a claim construction
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`dispute. The parties dispute whether claim 1 of U.S. Patent No. 8,277,377 (the “’377 patent”)
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`encompasses one, two, three, or an unlimited number of servers. This dispute is material to non-
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`infringement and invalidity because, if the claim encompasses one server (or two), then Fitbit’s
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`accused devices cannot infringe any asserted claim, and if the claim encompasses more than one
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`server, then all asserted claims are invalid under 35 U.S.C. § 112.
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`I.
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`THE TERMS MUST BE CONSTRUED TO DETERMINE NON-INFRINGEMENT
`AND INVALIDITY
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`Claim 1 of the ’377 patent is the only asserted independent claim—the other asserted
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`claims 4, 5, 6, 9, and 12 all depend from claim 1, either directly or indirectly. (See D.I. 270, Ex.
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`17.) ’377 patent claim 1 uses three different terms that include the word “server”:
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`***
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`a. downloading an application to a web-enabled wireless phone
`directly from a remote server over the internet;
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`***
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`g. sending the exercise-related information to an internet server via
`a wireless network;
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`h. receiving a calculated response from the server, the response
`associated with a calculation performed by the server based on the
`exercise-related information.
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`(Id. at claim 1 (emphasis added).) The parties dispute the number of distinct servers that may be
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`used to practice claim 1 with respect to both non-infringement and invalidity.
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`1.
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`Philips Believes That Claim 1 May Encompass An Unlimited Number Of
`Different Servers
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`Philips’ expert witness, Dr. Martin, argues that claim 1 may encompass any number of
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`distinct servers; he does not believe that the claim is limited to one, two, or even three servers.
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`With respect to infringement of element 1.a, Dr. Martin attempts to identify the “remote
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`1
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 5 of 17
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`server” as follows: “I understand that one of Fitbit’s engineers, Mr. Boccon-Gibod, has testified
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`that in order to download the Fitbit App, a user typically downloaded it from the Google Play Store
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`or the Apple App Store (both of which are remote servers).” (See D.I. 270, Ex. 2 at ¶ 55.) While
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`Dr. Martin does not identify any specific “remote server” or expressly say so, it appears that he is
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`pointing to Apple and Google servers as the “remote server” for element 1.a.
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`With respect to infringement of element 1.g, Dr. Martin attempts to identify an undefined
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`number of different “Fitbit servers” as the “internet server” as follows: “…Fitbit notes that when
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`its devices sync, data is uploaded to Fitbit servers….” (Id. at ¶ 127; see also id. at ¶¶ 126, 128,
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`129, 130 (referring generically to Fitbit “servers”).) While Dr. Martin does not identify any
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`specific “internet server,” he points to a seemingly unlimited number of “Fitbit servers,” which are
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`different than the Apple and Google servers on which he relied for element 1.a.
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`Finally, with respect to infringement of element 1.h, Dr. Martin attempts again to identify
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`an undefined number of “Fitbit servers” as “the server” as follows:
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`…when a ’377 Device syncs with a web-enabled wireless phone
`through the Fitbit App, exercise-related data is uploaded to Fitbit’s
`servers. This data is then processed by the servers. …The Fitbit
`App then receives the processed data back from the servers, which
`includes the results of calculations performed by the server based on
`the exercise-related information.
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`(Id. at ¶ 133; see also id. at ¶¶ 136, 139 (referring generically to Fitbit “servers”).) While Dr.
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`Martin again does not identify any specific “server,” he again points to a seemingly unlimited
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`number of “Fitbit servers,” which again are different than the Apple and Google servers on which
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`he relies for element 1.a.
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 6 of 17
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`Thus, Dr. Martin identified three or more servers allegedly used to practice claim 1: (1) an
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`Apple or Google server for element 1.a, (2) multiple Fitbit servers for element 1.g, and (3) multiple
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`Fitbit servers for element 1.h, which are different than those he identified for element 1.g.
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`Dr. Martin’s invalidity analysis confirms his unlimited view. In responding to Fitbit’s
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`indefiniteness defense for claim 1, Dr. Martin first appears to argue that the claim encompasses
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`two servers—the “remote server” of element 1.a and the “internet server” of element 1.h:
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`Indeed, the claim language itself refers to at least two servers in
`different ways – a “remote server” and an “internet server.” For
`instance, limitation 1(a) refers recites [sic] “downloading an
`application…from a remote server”, and limitation 1(g) recites
`“sending the exercise-related information to an internet server”.
`Because each of these limitations describe a server with open ended
`articles (“a remote server” and “an internet server”), they do not
`have to be the same server. In contrast, limitation 1(h) (“receiving
`a calculated response from the server, the response associated with
`a calculation performed by the server based on the exercise-related
`information”) twice uses the definite article “the” in reference to a
`server. And a POSITA would understand that the server referred to
`in limitation 1(h) is the same server that limitation 1(g) referred to
`as the 1(h) limitation involves that server performing a calculation
`based on the exercise-related information that was sent to that same
`server in limitation 1(g).
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`(Id. at ¶ 286.) However, in the last sentence of this argument, Dr. Martin ignores the claim’s use
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`of the singular “server” and reads in the plural “servers” from the specification:
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`I also note that both the “server” referred to in limitation 1(a) and the
`“server” referred to in limitations 1(g) and 1(h) can be an array of servers
`as demonstrated by the specification. See ’377 Patent at 8:45-51.
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`(Id. at ¶ 287.)
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`2.
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`Fitbit Maintains That Claim 1 Is Limited To One Server
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`In contrast to Dr. Martin’s unlimited view, Fitbit’s expert witness, Dr. Paradiso, argues that
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`claim 1 only encompasses one server.
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 7 of 17
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`In his invalidity report, Dr. Paradiso opined that “the plain and ordinary meaning of this
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`claim, as it would have been understood by a POSITA on or around December 17, 1999, is that all
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`three instances of the word ‘server’ in claim 1 refer to the same single server.” (See D.I. 261, Ex.
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`3 at ¶ 1022.) Dr. Paradiso cited support from the specification and file history. (Id. at ¶¶ 1023-
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`1028.) Dr. Paradiso then further opined:
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`If claim 1 is, in fact, interpreted such that it can be performed by
`more than one server (i.e., two or more servers)—as it appears that
`Philips may believe—then, in my opinion, claim 1 is indefinite.
`Specifically, for example, if the “remote server” of element 1.a. and
`the “internet server” of element 1.g. are interpreted such that they
`may be met by two different servers, then it would have been unclear
`to a POSITA at the relevant time which of those two servers is
`referenced in element 1.h. (“the server”). And if claim 1 is
`indefinite, then all of the other ’377 patent asserted claims (i.e.,
`claims 4-6, 9, and 12) are also indefinite because they each depend,
`directly or indirectly, from claim 1.
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`(Id. at ¶ 1031.)
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`In his non-infringement report, Dr. Paradiso repeated that the proper scope of claim 1 is
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`limited to one server and cited additional support from the specification, provisional application,
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`file history, and knowledge and skill of a POSITA at the ’377 patent’s alleged December 1999
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`priority date. (Ex. 1 at ¶¶ 230-248.) Thus, Dr. Paradiso disagreed with Dr. Martin’s infringement
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`opinion “because the Martin Report points to three or more different servers that are allegedly used
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`to perform the method steps of claim 1.” (Id. at ¶ 249; see also id. at ¶¶ 250-253.)
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`Dr. Paradiso further explained that “[e]ven if…claim 1 utilizes two servers—(1) a ‘remote
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`server’ from which the application is downloaded in claim element 1.a and (2) a separate ‘internet
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`server’ to which exercise-related information is sent in claim element 1.g, and which performs the
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`calculation and sends the calculated response in claim element 1.h, then the Martin Report still
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`does not provide any basis for finding that Fitbit infringes claim 1.” (Id. at ¶ 254.) Dr. Paradiso
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`noted his opinion is supported by at least the following, which he confirmed with a Fitbit engineer:
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`(Id. at ¶ 258; see also, generally, id. at ¶¶ 255-261 (detailed description).)
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`Finally, Dr. Paradiso opined that “there is no reasonable, plain and ordinary interpretation
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`of claim 1 that permits infringement using three or more different servers to satisfy the three
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`‘server’ elements of claim 1, as are used in the process accused of infringement in the Martin
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`Report” because claim element 1.h refers to “the server,” which is clearly a reference back to the
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`server of element 1.a and/or the server of element 1.g, and not a third, separate server. (Id. at ¶¶
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`262-263.) And even under that interpretation, Dr. Paradiso opined that the process accused by Dr.
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`Martin does not infringe. (Id. at ¶ 263.)
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`3. When A Claim Construction Dispute Arises After The Original Claim
`Construction Process, The Court Must Construe The Disputed Term(s)
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`“[T]he construction of a patent, including terms of art within its claim, is exclusively within
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`the province of the court.” Markman v. Westview Instrs., 517 U.S. 370, 372 (1996). “The Court
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`[m]ust [r]esolve [c]laim [c]onstruction [d]isputes [w]henever [t]hey [a]rise.” MedIdea, L.L.C. v.
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`DePuy Orthopaedics Inc., 422 F. Supp. 3d 459, 466 (D. Mass. 2019) (Sorokin, J.) (“Not only is
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`[defendant] entitled to have the Court address and resolve the newly-arising claim construction
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`dispute, the Court must resolve it.”) (citing O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
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`521 F.3d 1351, 1362 (Fed. Cir. 2008) (“When the parties present a fundamental dispute regarding
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`the scope of a claim term, it is the court’s duty to resolve it.”); MedIdea, L.L.C. v. DePuy
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`Orthopaedics, Inc., No. 1:17-cv-11172, 2018 U.S. Dist. LEXIS 190274, 2018 WL 5830849, *5
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 9 of 17
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`(D. Mass. Nov. 7, 2018) (when the parties disagree about the meaning of claim terms, “the Court
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`is not only empowered, but required, to construe” them)).
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`In MedIdea, the court had previously construed a term during the original claim
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`construction proceeding—“points of cam action.” See, e.g., 422 F. Supp. 3d at 466. The plaintiff
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`argued that the defendant was not entitled to further construction of that term. Id. However, the
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`court rejected that argument:
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`MedIdea may be correct that DePuy did not ask the Court to
`construe the claimed points of cam action as limited to convex
`surfaces, but that is of no moment, for neither did MedIdea ask the
`Court to construe them as encompassing concave surfaces. Indeed,
`neither party raised the question of the shape of the points of cam
`action claimed in the ’426 patent until now. But now that the parties
`have raised it, and given that its resolution is necessary to the
`determination of whether DePuy’s accused Attune® system
`infringes the last remaining claim asserted in this action, the Court
`must address and resolve it.
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`Id. The same is true here, where construction of the “server” terms of claim 1 was never raised by
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`either party during the Markman process (see, e.g., Dkt. 80-1; 212) and, as described above,
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`construction of those terms is necessary to resolve non-infringement and invalidity.
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`In fact, this Court has faced the identical situation where, following a first Markman
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`hearing and issuance of a Markman order, new claim construction issues arose during expert
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`discovery. See In re Body Sci. LLC Patent Litig., 167 F. Supp. 3d 152, 155-157 (D. Mass. 2016)
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`(Saylor, J.). “The Court then held a second Markman hearing on the three newly disputed issues,”
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`id. at 157, and construed the terms subject to those disputes. See generally, id.
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`Similarly, in this very case, in denying Fitbit’s request to construe more than the ten terms
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`presumptively permitted by the Local Rules, Judge Talwani stated:
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`To the extent that Fitbit believes that additional construction is
`necessary, Fitbit may, at a later date, request a second round of
`briefing on terms not already before the court if Fitbit first
`establishes that the construction of the additional terms is in dispute
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 10 of 17
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`and is material to invalidity or infringement of a claim.
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`(Dkt. 67.) Construction of the “server” terms is disputed and material to non-infringement and
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`invalidity, as explained above. Therefore, Fitbit requests that the Court conduct a claim
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`construction proceeding and construe the three “server” terms of claim 1 of the ’377 patent.
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`II.
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`A CLAIM CONSTRUCTION PROCEEDING WILL NOT PREJUDICE PHILIPS
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`While the cases suggest it is irrelevant, a claim construction proceeding regarding the
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`“server” terms of claim 1 will not prejudice Philips. There is currently no trial scheduled (see Dkt.
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`231), and Fitbit believes that the parties can brief and argue this discrete issue over the next few
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`months without disrupting the few currently-scheduled case deadlines or the yet-unscheduled trial
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`date. For example, to expedite resolution of this dispute, Fitbit respectfully suggests that the Court
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`set a briefing schedule requiring the parties to submit simultaneous opening briefs of no more than
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`ten (10) pages, followed by simultaneous responsive briefs of no more than five (5) pages one
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`week later. Fitbit is amenable to a Markman hearing thereafter at the Court’s convenience.
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`Further, Philips has not and will not suffer any prejudice by resolving this dispute now. Claim
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`construction is a question of law for the Court to decide. Markman, 517 U.S. at 372. Thus, Philips
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`was not deprived of any meaningful opportunity to take relevant fact discovery into this legal
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`dispute—the ’377 Patent claims, specifications, and file history are all that is necessary to construe
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`the disputed “server” terms. Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 320 (2015)
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`(“When the district court reviews only evidence intrinsic to the patent, the judge’s determination
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`is solely a determination of law.”).
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`III.
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`FITBIT COULD NOT HAVE RAISED THIS DISPUTE SOONER
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`Finally, while Fitbit believes that it is irrelevant whether Fitbit could have potentially raised
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`this dispute earlier, Philips believes that alleged fact should preclude the Court from construing
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`additional claim terms. Thus, Fitbit provides the following explanation of why Fitbit could not
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 11 of 17
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`have raised this dispute earlier. Much of the following discussion is repeated from Fitbit’s
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`opposition to Philips’ motion to strike certain of Dr. Paradiso’s opinions. (See Dkt. 265 at 14-20.)
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`1.
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`The Local Rules And Philips’ Objections Limited The Number Of Claim
`Terms Construed During The Initial Markman Proceeding
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`On May 14, 2020, the parties filed their Joint Claim Construction and Pre-Hearing
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`Statement. (Dkt. 65.) Local Rule 16.6(e)(1)(C) limits the parties to requesting construction of no
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`more than ten terms absent a Court order on a showing of good cause. At the time the parties
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`proposed terms for construction, Philips still asserted “31 claims with 59 limitations, against 21
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`different accused products, spread across four patents-in-suit and three separate patent families.”
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`(Dkt. 63 at 1.) Thus, Fitbit sought leave to construe four additional terms, or fourteen total. (Dkt.
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`63.) Philips opposed this request. (Dkt. 64.) Judge Talwani denied Fitbit’s request, but invited
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`Fitbit to later propose construction of further terms if they were material to non-infringement or
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`invalidity. (Dkt. 67.) Thus, leading up to the Markman hearing, the parties presented ten terms
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`for construction, including four from the then-asserted ’958 patent. (See, e.g., Dkt. 80-1.)
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`The parties submitted Markman briefs on June 5 and July 8. (Dkt. 72, 73, 77, 78.) Then,
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`the night before the Markman hearing, Philips withdrew its allegations of infringement of the ’958
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`patent. (Dkt. 81; see also Dkt. 87 (notice of proceedings for August 5, 2020 Markman hearing).)
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`Thus, the Court ultimately construed just six terms. (See Dkt. 212 at 10-12.)
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`2.
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`Fitbit Did Not Expect A Dispute Over The Meaning Of The “Server” Terms
`Based On The ’377 Patent’s File History And Provisional Application
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`The provisional application to which the ’377 patent claims priority only disclosed systems
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`utilizing one server. (See D.I. 265, Ex. 9 at 6 of 7.) For example, the provisional includes one
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`figure depicting just one server, a “remote web server”:
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 12 of 17
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`(Id.). The provisional application repeatedly describes embodiments utilizing one single server:
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`For example, a diabetic could connect a blood glucose meter to a
`web-enabled cell phone while away from home and download data
`to a Diabetes Management Company’s server and in response
`receive guidance displayed on the screen (or by voice) about choices
`for the next meal. Alternatively, the same person may take the
`WWD to the local gymnasium, send data output from various
`exercise machines over the Internet and receive a personalized
`response from the server of a company specializing in Health &
`Lifestyle Management.
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`(Id. at 4 of 7 (emphasis added).)
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`In the preferred embodiment of the present invention, a web-enabled
`wireless phone (e.g. Sprint PCS Phone) is coupled to a medical
`monitoring device, such as (but not limited to) a blood glucose
`meter. An adapter is used if necessary to convert the output signal
`of the medical data monitor to a suitable input signal for the phone.
`The patient connects to a specific Internet site and a software
`program, resident on a remote server located on the Internet,
`downloads an interactive user interface for that patient and the
`measurement of the physiological data. Further information may be
`provided to the patient in response to the data or to other inputs that
`have been entered by voice or keypad.
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`(Id. at 5 of 7 (emphasis added).) In order to claim priority to this provisional, which Philips does,
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 13 of 17
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`the provisional must provide an adequate written description of the claimed inventions. See
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). And the
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`provisional never describes or depicts a system utilizing more than one server. Similarly, the
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`prosecution history confirms that claim 1 only encompasses a single server.
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`For example, the originally submitted claim did not include element 1.a, but did include
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`the following predecessors to elements 1.g and 1.h of the final, issued claim 1:
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`d. sending the health-related information to an internet server via
`a wireless network;
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`e. receiving a calculated response from a server, the response
`associated with a calculation performed by the server based on the
`health-related information….
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`(Ex. 2 at PNA-FB0001495 (emphasis added).) In response to the very first Office Action in
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`prosecution, the applicant amended the aforementioned element 1.e so that it referred to “the
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`server” instead of “a server.” (Id. at 1598.) In other words, the applicant amended the claim to
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`add antecedent basis to “the server” of element 1.e, intentionally clarifying that “the server” of
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`element 1.e was the “internet server” of element 1.d—i.e., the claim as then-drafted encompassed
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`only one server. These ultimately matured into elements 1.g and 1.h of the final, issued claim 1.
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`Further, element 1.a. of the final, issued claim 1 was added in the last amendment before
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`allowance to overcome prior art. (Id. at 1934.) In allowing the patent, the examiner treated the
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`server of element 1.a. as the same server previously included in elements 1.g. and 1.h.:
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`The prior art does not disclose or fairly suggest a web-enabled
`wireless phone for interfacing with a device which receive exercise
`related information; wherein said web-enabled wireless phone
`downloads a software application directly from a remote server via
`the Internet, and uses said application to receive and transmit a
`user’s exercise information for management and analysis by said
`remote server.
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`(Id. at 1953 (emphasis added).) Thus, the file history confirms the claim encompasses one server.
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 14 of 17
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`3.
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`Philips Concealed The Existence Of A Dispute Over The Meaning And Scope
`Of Claim 1 With Respect To The “Server” Elements
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`On May 15, 2020, Philips disclosed its supplemental infringement contentions, which
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`remain the operative infringement contentions in this case. (See D.I. 270, Ex. 11.) Philips’
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`infringement contentions merely parrot the claim language and then excerpt various screenshots,
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`without ever identifying a specific server that performs any of the three server elements or
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`specifically noting that Philips reads claim 1 to potentially encompass more than one server:
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`[element 1.a.]: The method provided by the Accused Product
`involves downloading an application (the “Fitbit App”) to a web-
`enabled wireless phone directly from a remote server over the
`internet: [screenshots]
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`***
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`[element 1.g.]: The method of the Accused Product involves sending
`the exercise related information to an internet server via a wireless
`network, as demonstrated by the fact that this data can then be
`accessed through the fitbit.com dashboard website: [screenshots]
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`[element 1.h.]: The method of the Accused Product involves
`receiving a variety of different calculated responses from the server
`(such as cardio fitness score, heart rate zones, and resting heart rate),
`the responses associated with a calculation performed by the server
`based on the exercise-related information: [screenshots]
`
`(See, e.g., D.I. 270, Ex. 12 at 2, 16-18, 19-20.) Philips, like Dr. Martin, did not indicate which
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`particular “server” allegedly meets any element—including who owns or operates that server or
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`where it is located. Thus, Philips’ view of the meaning and scope of the “server” terms was unclear
`
`at best.
`
`By way of contrast, on March 23, 2021, Fitbit disclosed clear and particular non-
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`infringement contentions in a supplemental response to Philips’ Interrogatory No. 1. (See D.I.
`
`265, Ex. 7 at 74-76.) Specifically, Fitbit contended that:
`
`…the “remote server” from which any application is downloaded is
`not the same as the “server” in the “sending” claim element or the
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 15 of 17
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`“server” in the “receiving a calculated response” claim element. The
`claims, read in the context of the intrinsic evidence, require “the
`server” to be the same in these recited claim elements.
`
`The Accused Products do not perform the step of “receiving a
`calculated response from the server.”
`
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`
`
`
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`
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`(Id. at 75.) Thus, Philips was aware, as of March 23, 2021, that like the provisional application,
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`the applicant, and the United States Patent Examiner that allowed the claim in the first place, Fitbit
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`interprets claim 1 to require one server to perform all three server elements. But Philips never
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`notified Fitbit that Philips disputes the meaning and scope of the three “server” terms or that Philips
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`interprets claim 1 differently than the ’377 patent’s own provisional application and the patent
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`examiner. Instead of bringing the issue to Fitbit or the Court’s attention, and with Fitbit’s clear
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`non-infringement contentions in hand, Philips waited for nearly eight months until opening expert
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`reports, continuing to rely on its vague infringement contentions despite knowing that the parties
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`would ultimately dispute the scope and meaning of the “server” terms.
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`Consequently, while Philips might have raised the dispute sooner, Fitbit could not have.
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`CONCLUSION
`
`For the foregoing reasons, Fitbit respectfully requests that the Court set a briefing schedule
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`and conduct a claim construction proceeding to resolve the parties’ “server” claim construction
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`dispute.
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 16 of 17
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`Dated: January 7, 2022
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`By:
`
`
`
`
`
`
` /s/ David J. Shaw
`David J. Shaw (pro hac vice)
`dshaw@desmaraisllp.com
`DESMARAIS LLP
`1701 Pennsylvania Ave., NW, Suite 200
`Washington, D.C. 20006
`Telephone: (202) 451-4900
`Facsimile: (202) 451-4901
`
`Karim Z. Oussayef (pro hac vice)
`koussayef@desmaraisllp.com
`Leslie M. Spencer (pro hac vice)
`lspencer@desmaraisllp.com
`Brian D. Matty (pro hac vice)
`bmatty@desmaraisllp.com
`Henry L. Ard (pro hac vice)
`hard@desmaraisllp.com
`Eric Speckhard (pro hac vice)
`especkhard@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`
`Ameet A. Modi (pro hac vice)
`amodi@desmaraisllp.com
`DESMARAIS LLP
`101 California Street
`San Francisco, CA 94111
`Telephone: (415) 573-1900
`Facsimile: (415) 573-1901
`
`Gregory F. Corbett (BBO #646394)
`gcorbett@wolfgreenfield.com
`Elizabeth A. DiMarco (BBO #681921)
`edimarco@wolfgreenfield.com
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02110
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`
`Attorneys for Defendant Fitbit LLC
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`Case 1:19-cv-11586-FDS Document 276 Filed 01/07/22 Page 17 of 17
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`CERTIFICATE OF SERVICE
`
`I certify that this document is being filed through the Court’s electronic filing system,
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`which serves counsel for other parties who are registered participants as identified on the Notice
`of Electronic Filing (NEF). Any counsel for other parties who are not registered participants are
`being served by first class mail on the date of electronic filing.
`
`
`
`/s/ Elizabeth A. DiMarco
`Elizabeth A. DiMarco
`
`
`
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`14
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