Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 1 of 14
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`v.
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`FITBIT, INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-FDS
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`PLAINTIFF’S OPPOSITION TO DEFENDANT’S MOTION
`CONCERNING THE CONSTRUCTION OF “SERVER” CLAIM
`TERMS (DKT. 275.)
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`I. 
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`II. 
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`III. 
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`IV. 
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 2 of 14
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................................................... 1 
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`FITBIT’S MANUFACTURED CLAIM CONSTRUCTION ARGUMENTS VIOLATE
`MULTIPLE TENETS OF CLAIM CONSTRUCTION ......................................................... 2 
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`FITBIT HAS BEEN INTIMATELY AWARE OF PHILIPS’S INFRINGEMENT
`ARGUMENTS CONCERNING THE “SERVER” TERMS FOR NEARLY TWO YEARS 6 
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`SUMMARY JUDGMENT BRIEFING WOULD BE THE MOST LOGICAL AND
`EFFICIENT WAY TO RESOLVE THE DISPUTE ............................................................... 8 
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 3 of 14
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`TABLE OF AUTHORITIES
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`Page(s)
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`
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`Cases
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`01 Communique Laboratory, Inc. v. LogMeIn, Inc.,
`687 F.3d 1292 (Fed. Cir. 2012)..............................................................................................4, 5
`
`Alfred E. Mann Found. For Sci. Research v. Cochlear Corp.,
`841 F.3d 1334 (Fed. Cir. 2016)..................................................................................................5
`
`Athenahealth, Inc. v. AdvancedMD Software, Inc.,
`11-11260-GAO, 2013 WL 6187145 (D. Mass. Nov. 26, 2013) ............................................5, 7
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`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008)..........................................................................................1, 3, 4
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`Bd. of Regents of the U. of Texas System v. BENQ Am. Corp.,
`533 F.3d 1362 (Fed. Cir. 2008)..............................................................................................1, 3
`
`In re Body Sci. LLC Patent Litig.,
`167 F. Supp. 3d 152 (D. Mass. 2016) ........................................................................................9
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`Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp.,
`93 F.3d 1572 (Fed. Cir. 1996)....................................................................................................3
`
`Fractus, S.A. v. ZTE Corp.,
`No. 3:18-CV-2838-K, 2019 WL 5267426 (N.D. Tex. Oct. 16, 2019) ..................................8, 9
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`Long Hua Tech. Co., Ltd v. A123 Sys., LLC,
`CV 20-11887-RGS, 2021 WL 4122740 (D. Mass. Sept. 9, 2021) ............................................5
`
`MedIdea, L.L.C. v. DePuy Orthopaedics, Inc.,
`422 F. Supp. 3d 459 (D. Mass. 2019), aff'd, 833 Fed. Appx. 338 (Fed. Cir.
`2021)(unpublished) ................................................................................................................8, 9
`
`MicroStrategy Inc. v. Business Objects, S.A.,
`429 F.3d 1344 (Fed. Cir. 2005)..................................................................................................8
`
`Salazar v. Procter & Gamble Co.,
`414 F.3d 1342 (Fed. Cir. 2005)..................................................................................................5
`
`SiOnyx, LLC v. Hamamatsu Photonics K.K.,
`270 F. Supp. 3d 390 (D. Mass. 2017) (Saylor, J.) .....................................................................3
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`Sorensen v. Int’l Trade Comm’n,
`427 F.3d 1375 (Fed. Cir. 2005)..................................................................................................5
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`ii
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 4 of 14
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`Wi-LAN USA, Inc. v. Apple Inc.,
`830 F.3d 1374 (Fed. Cir. 2016)..................................................................................................8
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`iii
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`I.
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 5 of 14
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`INTRODUCTION
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`Plaintiff Philips North America LLC (“Philips”) respectfully submits this Opposition to
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`Defendant Fitbit LLC’s (“Fitbit”) Motion for the Construction of Three Related Claim Terms (Dkt.
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`275.) Philips opposes Fitbit’s efforts to insert additional claim construction briefing for the terms
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`“a remote server,” “an internet server,” and “the server” (collectively, “the server terms”) in claim
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`1 of U.S. Patent No. 8,277,377 (“the ’377 patent”) in view of the swiftly approaching deadline for
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`dispositive motions.
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`Philips agrees that when parties have a genuine dispute as to the meaning of a claim term,
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`the Court must resolve it. However, Philips disagrees that there is any merit to Fitbit’s desperate
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`and belated effort to avoid infringement with newly concocted claim construction theories.
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`That the present dispute was manufactured and not genuine is demonstrated by the fact that
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`Fitbit’s arguments violate multiple fundamental tenets of claim construction. Fitbit’s argument
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`ignores that when a claim uses different words to describe different things, they should not be
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`interpreted as necessarily referring to the same thing. (e.g. “a remote server” and “an internet
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`server”). Bd. of Regents of the U. of Texas System v. BENQ Am. Corp., 533 F.3d 1362, 1371
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`(Fed. Cir. 2008) (“Different claim terms are presumed to have different meanings.”). Fitbit’s
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`argument also ignores that using “an indefinite article ‘a’ or ‘an’ in patent parlance carries the
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`meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”
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`Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (quoting KCJ
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`Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)).
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`Fitbit’s purported justification for raising this issue so late in the case also suggest that this
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`dispute was manufactured and not genuine. While Fitbit argues that Philips did not accuse multiple
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`servers of infringing until the service of opening expert reports, the record unequivocally
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`demonstrates the falsity of that assertion. The reality is that Fitbit has been on notice of Philips’s
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`1
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 6 of 14
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`infringement theories since the service of infringement contentions about two years ago—in which
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`Philips alleged infringement by users downloading the Fitbit App from Google or Apple’s servers.
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`What is more, Fitbit’s own opening expert report—served at the same time as Dr. Martin’s opening
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`report—confirms that Fitbit was aware of Philips’s contention since it addressed the issue before
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`receiving Philips’s expert report on infringement. (Dkt. 261-3 at ¶ 1030.) Indeed, Fitbit’s
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`attempt to argue indefiniteness based on Philips’s infringement contention that reads “a remote
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`server” and “an internet server” on different things is one of the items at issue in Philips’s Motion
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`to Strike portions of Dr. Paradiso’s expert report. (Dkt. 260 at 14-17 of 19.)1
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`Regardless of the lack of merit in Fitbit’s manufactured claim construction argument, to
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`the extent Fitbit contends that the dispute is salient to non-infringement and invalidity, the proper
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`time to raise it at this stage would be in upcoming dispositive motions, which are due in less than
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`six weeks on March 2, 2022. There is no reasoned basis to derail the schedule or complicate the
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`proceedings with an additional round of claim construction. Accordingly, Fitbit’s motion
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`requesting a supplemental round of claim construction should be denied because the parties have
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`the opportunity to address disputed terms in their dispositive motions under the schedule entered
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`by the Court.
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`II.
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`FITBIT’S MANUFACTURED CLAIM CONSTRUCTION ARGUMENTS
`VIOLATE MULTIPLE TENETS OF CLAIM CONSTRUCTION
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`Claim 1’s language clearly can cover multiple servers and Fitbit’s argument to the contrary
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`violates multiple tenets of claim construction. Specifically, the server referred to in limitation 1(a)
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`(“downloading an application . . . from a remote server”) does not have to be the same server
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`referred to in limitation 1(g) (“sending the exercise-related information to an internet server”) as
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`they are referred to with open ended articles (“a remote server” and “an internet server”). The
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`1 For clarity, the pincites to pages in filed documents refer to the page numbers in the ECF header.
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`2
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 7 of 14
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`server referred to twice in limitation 1(h)2 (with the definite article “the”) refers to the same server
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`that immediately preceding limitation 1(g) referred to as it involves that server performing a
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`calculation based on the exercise-related information that was sent to the server in limitation 1(g).
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`Thus, the claim language itself refers to at least two servers by different names – a “remote server”
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`and an “internet server.”
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`Fitbit’s position is contrary to the well-established principle that different words in a claim
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`have different meanings and as such “remote server” and “internet server” do not have the same
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`meaning. BENQ Am. Corp., 533 F.3d 1362 at 1371. (“The fact that the claim distinguishes
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`between ‘each pre-programmed code’ and ‘the matched one or more pre-programmed codes’ is
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`significant. Different claim terms are presumed to have different meanings.”); Ethicon Endo-
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`Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (reversing lower court’s
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`ruling that a “pusher assembly” and a “pusher bar” have the same meaning); SiOnyx, LLC v.
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`Hamamatsu Photonics K.K., 270 F. Supp. 3d 390, 405 (D. Mass. 2017) (Saylor, J.) (“There is a
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`presumption in claim construction that different terms have different meanings. From that
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`presumption, it follows that the patentee intended a different meaning by the term ‘height,’ [], than
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`the term ‘protrude above the semiconductor surface,’ . . .”) (citing CAE Screenplates Inc. v.
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`Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000)).
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`Fitbit’s rationale for requesting that the Court construe the server terms also violates a well
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`settled rule that “a” remote server or “an” internet server means there is only one remote server or
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`one internet server. The Federal Circuit “has repeatedly emphasized that an indefinite article ‘a’
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`or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing
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`the transitional phrase ‘comprising.’” Baldwin Graphic, 512 F.3d at 1342. “That ‘a’ or ‘an’ can
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`2 “receiving a calculated response from the server, the response associated with a calculation performed by the server
`based on the exercise-related information” ’377 patent, claim 1, limitation (h).
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`3
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 8 of 14
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`mean ‘one or more’ is best described as a rule, rather than merely as a presumption or even a
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`convention.” Id. (emphasis added); 01 Communique Laboratory, Inc. v. LogMeIn, Inc., 687 F.3d
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`1292, 1297 (Fed. Cir. 2012) (“As a general rule, the words ‘a’ or ‘an’ in a patent claim carry the
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`meaning of ‘one or more.’”) (internal quotations and citations omitted). Further, Fitbit’s
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`proposition that the use of the word “the” is indicative that the server in limitation 1(h) must be
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`the same physical server in limitation 1(g) also goes against the Federal Circuit’s rule as the
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`“subsequent use of definite articles ‘the’ or ‘said’ in a claim to refer back to the same claim term
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`does not change the general plural rule, but simply reinvokes that non-singular meaning.” Baldwin
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`Graphic, 512 F.3d at 1342.
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`While there are exceptions to this rule, none of those are present here. There is no evidence
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`that the patentee clearly intended to limit “a remote server” or “an internet server” to only one
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`server of either category. Baldwin Graphic, 512 F.3d at 1342-1343 (“The exceptions to this rule
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`are extremely limited: a patentee must ‘evince[ ] a clear intent” to limit ‘a’ or ‘an’ to “one.’ …. An
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`exception to the general rule that “a” or “an” means more than one only arises where the language
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`of the claims themselves, the specification, or the prosecution history necessitate a departure from
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`the rule.”). Fitbit attempts to invoke this exception by pointing to Figures in the ’377 patent and
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`the drawing in the provisional application as having only one box showing a server, however, the
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`Federal Circuit has dismissed such arguments as failing to compel “departure for the general rule.”
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`01 Communique Laboratory, 687 F.3d 1292 at 1297 (“However, the fact that a locator server
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`computer is represented by a single box in some of the figures does not ‘necessitate’ a departure
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`from the general rule that ‘a’ locator server computer may mean ‘one or more’ locator server
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`computers.”). As is the case here, where the specification clearly states that one or more servers
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 9 of 14
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`may be used,3 the Federal Circuit found such disclosure as support that the general rule applied.
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`01 Communique Laboratory, 687 F.3d at 1297. (“More to the point, the specification also discloses
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`expressly that ‘Server Computer 12 may comprise one or more computers, as is well known.’”).
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`Courts in this district have likewise applied this rule. See Long Hua Tech. Co., Ltd v. A123
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`Sys., LLC, CV 20-11887-RGS, 2021 WL 4122740, at *5 (D. Mass. Sept. 9, 2021) (construing a
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`battery comprised of “a” current collector substrate and “an” electrode layer on one surface of
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`“the” current collector substrate” as “a lithium battery that uses more than one current collector
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`substrate and has an electrode layer on one surface of at least one of those current collector
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`substrates.); Athenahealth, Inc. v. AdvancedMD Software, Inc., 11-11260-GAO, 2013 WL
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`6187145, at *2 (D. Mass. Nov. 26, 2013) (construing “a medical practice management server” as
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`“one or more servers that perform functions…..” and “a payor server” as “one of more servers
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`used by a specific payor….”).
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`Fitbit does not provide evidence to overcome the rule either by its statements regarding the
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`prosecution history where Fitbit simply refers to statements made by the examiner. (Dkt. 276 at
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`13 of 17.) However, “an examiner’s unilateral statement does not give rise to a clear disavowal of
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`claim scope by the applicant.” Alfred E. Mann Found. For Sci. Research v. Cochlear Corp., 841
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`F.3d 1334, 1341 (Fed. Cir. 2016); see also Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347
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`(Fed. Cir. 2005) (“This court refuses to create a rule or presumption that the applicant in this case
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`disavowed claim scope by silence”); Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1378-79
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`3 “It should also be noted that each of application 62, algorithm 63, external data source 74, or AI
`system 76, may physically reside on more than one server, e.g., on an array of servers for, e.g.,
`storage or multiple processing purposes. Each of application 62, algorithm 63, external data source
`74, or AI system 76, or combinations of each, may also respectively reside on different servers.”
`’377 patent at 8:45-51 (emphasis added); Fig. 4.
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 10 of 14
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`(Fed. Cir. 2005) (“[I]t is the applicant, not the examiner, who must give up or disclaim subject
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`matter that would otherwise fall within the scope of claims.”).
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`III. FITBIT HAS BEEN INTIMATELY AWARE OF PHILIPS’S
`INFRINGEMENT ARGUMENTS CONCERNING THE “SERVER”
`TERMS FOR NEARLY TWO YEARS
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`Fitbit’s claim of surprise regarding Philips infringement allegations regarding what servers
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`are referred to in the claim rings hollow. Philips’s allegation regarding the servers in claim 1 has
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`been consistent and disclosed to Fitbit since at least May 2020. (Dkt.. 261-5.) Fitbit’s dismissive
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`statement that the contentions were simply excerpts of “various screenshots” suggests that the
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`screenshots contained no information about the servers Philips identified as meeting the various
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`limitations. This is simply incorrect, as shown below “a remote server” is identified as the Apple
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`or Google app stores where the Fitbit app can be accessed and downloaded, and the pertinent
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`language from the screen shot was identified by being enclosed in a red rectangle. Philips did not
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`leave Fitbit in the dark as to its theory regarding the term “a remote server.”
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 11 of 14
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`(Id. at 3 of 27.) Of course, even were Philips’s contentions not as clear as they actually are, Fitbit
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`of course knows that users download the Fitbit App from Google and Apple—there was no
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`“surprise.”
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`Likewise, for “an internet server” in limitation 1(g) and “the server” in limitation 1(h), the
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`screen shots clearly identify how the internet server term is met by Fitbit’s servers and are enclosed
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`by a red rectangle. Nothing regarding Philips’s interpretation of the server terms was hidden or
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`“concealed” from Fitbit.
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`(Id. at 17 of 27.)
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`(Id. at 20 of 27.)
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 12 of 14
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`Further, Fitbit’s own expert admits in his opening report, (served the same day as
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`Philips’s expert’s opening report), that Philips’s infringement contentions identified that the server
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`in limitation 1(a) was a server that the application was downloaded from, and the server that the
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`exercise data was uploaded to and from which a calculated response was sent for limitations 1(g)
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`and 1(h) were Fitbit servers. (Dkt. 261-03 at ¶ 1030.) It is absurd to allege that Philips somehow
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`“concealed” its infringement allegations when Fitbit’s own expert accordingly responded to them.
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`At bottom, there is no surprise, other than Fitbit’s failure to raise the issue until now. Fitbit
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`argues that because Fitbit put forth its position in its non-infringement interrogatory (which is yet
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`another admission that it was not actually “surprised” by Philips’s allegations), yet it did nothing
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`to advance its argument during claim construction perhaps recognizing the lack of merit in
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`advancing arguments so plainly at odds with basic principles of claim construction.
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`IV.
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`SUMMARY JUDGMENT BRIEFING WOULD BE THE MOST LOGICAL
`AND EFFICIENT WAY TO RESOLVE THE DISPUTE
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`Courts regularly entertain claim construction disputes at summary judgment. MedIdea,
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`L.L.C. v. DePuy Orthopaedics, Inc., 422 F. Supp. 3d 459, 460 (D. Mass. 2019), aff'd, 833 Fed.
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`Appx. 338 (Fed. Cir. 2021)(unpublished) (claim construction dispute was raised in the defendant’s
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`summary judgment motion); see also, Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1380–81
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`(Fed. Cir. 2016) (applying the “traditional claim construction framework to this review even
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`though the district court reached these constructions on summary judgment and reconsideration of
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`summary judgment rather than in the phase of the case specifically dedicated to claim
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`construction.”); MicroStrategy Inc. v. Business Objects, S.A., 429 F.3d 1344, 1350 (Fed. Cir. 2005)
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`(noting district court construed a limitation that was necessary to decide summary judgment
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`motion); Fractus, S.A. v. ZTE Corp., No. 3:18-CV-2838-K, 2019 WL 5267426, at *6 (N.D. Tex.
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`Oct. 16, 2019) (issuing a clarification of the claim term disputed during claim construction).
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 13 of 14
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`While Fitbit relies on MedIdea for the proposition that post-Markman claim construction
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`is appropriate, (Dkt. 276 at 9 of 17), as noted above the MedIdea court addressed the parties’ claim
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`construction dispute raised during summary judgment. Further, the case, In re Body Sci. LLC
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`Patent Litig., that Fitbit relies on is distinguishable, because, as Fitbit notes, this Court addressed
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`a claim construction dispute that “arose during expert discovery.” (Id. citing In re Body Sci. LLC
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`Patent Litig., 167 F. Supp. 3d 152, 155-157 (D. Mass. 2016)). However, as set forth above, Fitbit
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`was on notice of Philips’s position on the server terms well before expert discovery, and should
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`not be allowed to further delay these proceedings based on a manufactured and untimely dispute.
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`The March 2, 2022 deadline for dispositive motions is swiftly approaching. Fitbit does not
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`even suggest how its proposed extra claim construction briefing would co-exist with the Court’s
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`current schedule. Nor does Fitbit address the confusion that would ensue if the parties proceeded
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`with Fitbit’s proposed claim construction briefing in parallel with dispositive motions. Fitbit itself
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`has declared the disputed server terms are material to infringement and invalidity theories that
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`would be the very issues addressed in the parties’ summary judgment arguments. As such, Fitbit’s
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`requested relief for an extra claim construction briefing cycle and hearing should be denied, and
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`Fitbit can raise the issue in summary judgment if it so chooses.
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`Case 1:19-cv-11586-FDS Document 291 Filed 01/21/22 Page 14 of 14
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`Dated: January 21, 2022
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`Respectfully Submitted,
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`
` /s/ Ruben J. Rodrigues
`Lucas I. Silva (BBO 673,935)
`Ruben J. Rodrigues (BBO 676,573)
`John Custer (BBO 705,258)
`FOLEY & LARDNER LLP
`111 Huntington Avenue
`Suite 2500
`Boston, MA 02199-7610
`Phone: (617) 342-4000
`Fax: (617) 342-4001
`lsilva@foley.com
`rrodrigues@foley.com
`jcuster@foley.com
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`
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`Eley O. Thompson (pro hac vice)
`FOLEY & LARDNER LLP
`321 N. Clark Street
`Suite 2800
`Chicago, IL 60654-5313
`Phone: (312) 832-4359
`Fax: (312) 832-4700
`ethompson@foley.com
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`
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`Counsel for Plaintiff
`Philips North America LLC
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document was filed with
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`the Court through the ECF system and that a copy will be electronically served on registered
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`participants as identified on the Notice of Electronic Filing.
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`By: /s/Ruben J. Rodrigues
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`10
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