MEMORANDUM OF DECISION AND ORDER
`ON DEFENDANT FITBIT, INC.’S MOTION TO COMPEL
`CERTAIN OF MR. ARIE TOL’S EMAIL COMMUNICATIONS
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`January 27, 2022
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`DEIN, U.S.M.J.
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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 1 of 39
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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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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`CIVIL ACTION
`NO. 19-11586-FDS
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`I. INTRODUCTION
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`The plaintiff, Philips North America LLC (“Philips”), researches and develops numerous
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`technologies, including connected-health and related products such as wearable fitness
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`trackers that monitor and analyze personal health and fitness information. It maintains a
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`patent portfolio that consists of more than 60,000 patents, including patents pertaining to
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`connected health technologies. On July 22, 2019, Philips brought this action against Fitbit LLC
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`(“Fitbit”),1 a company that develops, manufactures, markets and sells connected health
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`products. By its Second Amended Complaint, Philips claims that Fitbit has infringed and
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`continues to infringe upon three of its U.S. patents. Fitbit denies liability and has asserted
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`counterclaims against Philips for declaratory judgment of non-infringement and invalidity.
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`1 Fitbit recently changed its name from Fitbit, Inc. to Fitbit LLC. (See Docket Nos. 226 & 227).
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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 2 of 39
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`The matter is presently before the court on “Defendant Fitbit, Inc.’s Motion to Compel
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`the Production of Certain of Mr. Arie Tol’s Email Communications” (Docket No. 198), by which
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`Fitbit is seeking an order compelling Philips to produce email communications that were sent or
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`received by one of the plaintiff’s employees, Mr. Arie Tol (“Mr. Tol”), and have been withheld
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`on the basis of attorney-client privilege and/or the work product doctrine. Mr. Tol is a Dutch
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`Patent Attorney and the Principal Licensing Counsel for the intellectual licensing division of
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`Philips’ parent company in the Netherlands where he works. However, he is not admitted to
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`the Dutch bar and is not a licensed attorney-at-law. At issue is whether, under these
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`circumstances, Philips is entitled to rely on the attorney-client privilege to withhold
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`communications reflecting legal advice provided and received by Mr. Tol. Also at issue is
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`whether Philips improperly relied on the attorney-client privilege to withhold communications
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`containing business rather than legal advice, and whether Philips has met its burden of showing
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`that documents withheld under the work product doctrine were prepared in anticipation of
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`litigation or for trial.
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`After consideration of the parties’ written submissions and oral arguments, and for all
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`the reasons detailed below, Fitbit’s motion to compel the production of Mr. Tol’s emails is
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`ALLOWED IN PART and DENIED IN PART. Specifically, Phillips cannot assert the attorney-client
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`privilege over Mr. Tol’s communications so Fitbit’s motion to compel is ALLOWED to the extent
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`Philips claims that the communications are privileged. However, Philips has appropriately
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`claimed work product protection with respect to Mr. Tol’s emails so Fitbit’s motion to compel is
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`DENIED with respect to the communications over which Philips has asserted work product
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`claims.
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`[2]
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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 3 of 39
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`II. FACTUAL AND PROCEDURAL BACKGROUND2
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`Mr. Tol’s Employment at Philips
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`The present dispute concerns email communications that were sent or received by Mr.
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`Tol between June 2, 2015 and December 17, 2019. (See Def. Ex. M; Tol Decl. ¶ 2).3 Mr. Tol is
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`the Principal Licensing Counsel for the Intellectual Property & Standards (“IP&S”) organization
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`of Philips’ parent company in the Netherlands, Koninklijke Philips N.V., where he has been
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`employed since 1995. (Id. ¶ 1). He has been registered as a Dutch Patent Attorney since 2000
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`and has been registered as a European Patent Attorney since 2003. (Id.). However, it is
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`undisputed that Mr. Tol is not an attorney-at-law and is not admitted to the bar for Dutch
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`attorneys-at-law. (See Def. Mem. (Docket No. 199) at 3; Hoyng Decl. ¶ 42 & n. 20-21). It is this
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`differing role between foreign patent attorneys and attorneys-at-law that raises the issue
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`whether the attorney-client privilege should apply.
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`2 The facts are derived from the following materials submitted by the parties in connection with Fitbit’s
`motion to compel: (1) the exhibits attached to the Declaration of David J. Shaw in Support of Fitbit, Inc.’s
`Motion to Compel the Production of Certain of Mr. Arie Tol’s Email Communications (Docket No. 200)
`(“Def. Ex.__”); (2) the Declaration of Arie Tol (“Tol Decl.”), which is attached as Exhibit 1 to the Plaintiff’s
`Opposition to Fitbit, Inc.’s Motion to Compel (Docket No. 210); (3) the Declaration of Willem A. Hoyng
`(“Hoyng Decl.”), which is attached as Exhibit 2 to the Plaintiff’s Opposition to Fitbit’s Motion to Compel
`(Docket No. 210); (4) the exhibits attached to the Declaration of David J. Shaw in Support of Fitbit, Inc.’s
`Reply in Support of its Motion to Compel the Production of Certain of Mr. Arie Tol’s Email
`Communications (Docket No. 214) (“Def. Supp. Ex. __”), including the Declaration of Mr. Frits W.
`Gerritzen (“Gerritzen Decl.”), which is attached as Exhibit 1 thereto; (5) the Declaration of Willem A.
`Hoyng (“Supp. Hoyng Decl.”), which is attached as Exhibit 1 to the Plaintiff’s Sur-Reply in Opposition to
`Fitbit, Inc.’s Motion to Compel the Production of Certain of Mr. Arie Tol’s Email Communications (Docket
`No. 220); and (6) the documents attached as Exhibit A (“Def. Supp. Ex. A") to Fitbit’s Status Report
`Regarding Fitbit’s Motion to Compel Certain Emails of Mr. Arie Tol (Docket No. 233).
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` 3
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` In his Declaration, Mr. Tol stated that Fitbit is seeking discovery of communications that Mr. Tol sent or
`received “between June 2, 2014 and December 17, 2019[.]” (Tol Decl. ¶ 2). The record demonstrates
`that the 2014 date is a typographical error and that the communications in dispute date from June 2,
`2015 through December 17, 2019. (See, e.g., id. ¶ 4; Def. Ex. M).
`[3]
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`

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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 4 of 39
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`In connection with his employment at Philips, Mr. Tol is primarily responsible for selling
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`and licensing patents. (Def. Ex. E at 12-14). He also provides advice on matters concerning
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`intellectual property, including advice on early-stage business activities and opportunities for
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`the company. (Id. at 14-18). Additionally, since 2015, Mr. Tol has been involved in evaluating
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`whether Fitbit and Garmin products infringe certain of Philips’ patents relating to activity
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`trackers or “fitness trackers.” (Tol Decl. ¶ 4). He currently serves as the primary Patent
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`Attorney at Philips with responsibility for managing the company’s enforcement of patents in
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`that field against both Fitbit and Garmin. (Id.).
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`Philips’ Notices of Infringement to Fitbit and Garmin
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`According to Mr. Tol, Philips’ approach to licensing its patents “almost always starts with
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`identifying infringers of Philips’s patent rights in anticipation of having to enforce those
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`patent[s] in court.” (Id. ¶ 3). As Mr. Tol describes the process:
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`the beginning of such licensing activities ... first involves identifying products that
`infringe Philips’s patents, and working up a case against the accused infringer.
`Next, Philips puts the infringer on notice of their infringement in view of
`pursuing enforcement actions for damages and/or an injunction against the
`infringers. Depending on the patent rights at issue, this may include an
`enforcement action in one or more of the United States, Europe, or Asia (or
`anywhere in which Philips’s patent rights may be enforced). While Philips is of
`course willing to enter into licensing discussion upon providing notice of
`infringement in order to settle disputes with accused infringers, the focus
`throughout is to develop and enforce Philips’s patent rights through legal action
`as necessary.
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`[4]
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`(Id.).
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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 5 of 39
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`Mr. Tol claims that this was the approach that Philips followed with respect to Fitbit and
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`Garmin.4 (Id.). Thus, in 2015, Philips began evaluating whether certain Fitbit and Garmin
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`products infringed on some of Philips’ patents relating to activity trackers. (Id. ¶ 4). The work
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`initially focused on reviewing and analyzing Philips’ patent rights to determine which patents
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`might be infringed by Fitbit and Garmin. (Id. ¶ 5). Mr. Tol and other Dutch Patent Attorneys, as
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`well as American Patent Attorneys working for Philips, participated in this effort under the
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`direction of Erik Pastink. (Id. ¶¶ 4-5). Mr. Pastink is a Dutch and European Patent Attorney
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`who currently serves as Senior IP Counsel for Philips in the Netherlands and whose name
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`appears on many of the communications that the plaintiff has withheld from production. (Id. ¶
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`5 & Ex. 1.A thereto; Def. Exs. A, K, M). Mr. Tol contends that a significant number of those
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`communications concern the pre-suit analysis and enforcement activities that Philips’ Attorneys
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`conducted with respect to Fitbit and Garmin. (See Tol Decl. ¶¶ 16-22, 24-26, 29-33, 39).
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`On February 17, 2016, Mr. Pastink sent a letter to Garmin on behalf of Philips IP&S. (Tol
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`Decl., Ex. 1.A). Therein, Mr. Pastink formally notified Garmin that certain of its products and
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`services in the field of activity trackers infringed upon one or more of Philips’ U.S. patents and
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`their foreign counterparts. (Id.). He also informed Garmin that Philips would be willing to
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`discuss the terms and conditions of a non-exclusive, world-wide license under its patents, and
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`that Philips wished to schedule a meeting with Garmin to discuss this matter “within two
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`months” from the date of his letter. (Id.). Finally, Mr. Pastink stated that “[f]or good order’s
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`4 According to Mr. Tol, Philips focused on Fitbit and Garmin at the same time due to the similarities in
`their allegedly infringing products and an overlap in the patents that Philips is attempting to enforce
`against those entities. (Tol Decl. ¶ 4).
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`[5]
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`

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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 6 of 39
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`sake, all Philips’ rights in respect of the unauthorized use of the patents listed in Exhibit 1
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`[attached to the letter] remain formally reserved.” (Id.).
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`Subsequently, on October 10, 2016, Philips’ Senior IP Counsel in the United States, Elias
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`Schilowitz, sent a nearly identical letter to Fitbit. (Tol Decl., Ex. 1.B). Therein, Mr. Schilowitz
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`informed Fitbit that he was writing on behalf of Philips IP&S and that “[t]his letter serves as
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`formal notice that the Fitbit products and services as indicated and identified in Exhibit 1
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`[attached to the letter], as well as Fitbit products and services having equal or similar
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`functionality, all infringe one or more Philips owned or controlled granted U.S. patents and
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`their foreign counterparts.” (Id.). Exhibit 1 lists 18 patents from nine different countries,
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`including the United States, that are owned by the plaintiff. (Id.). In the letter, Mr. Schilowitz
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`also stated that Philips was willing to have a discussion with Fitbit regarding the terms and
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`conditions of a non-exclusive, world-wide license under its patents, and he requested a meeting
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`with the defendant to discuss the matter “within two months from the date of [his] letter.”
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`(Id.). Finally, Mr. Schilowitz informed Fitbit that “[f]or good order’s sake,” Philips was formally
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`reserving all of its rights with regard to the unauthorized use of the patents listed in Exhibit 1.
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`(Id.).
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`Philips’ Infringement Litigation Against Garmin and Fitbit
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`Philips subsequently pursued discussions with Fitbit and Garmin regarding the possibility
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`of resolving the parties’ disputes through licensing arrangements. (Tol. Decl. ¶ 8; see Def. Exs.
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`C & D). It also took steps to enforce its patent rights against those parties in court. (Tol. Decl. ¶
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`8). On September 27, 2017, Philips filed a lawsuit against Garmin in Germany in which it
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`alleged infringement of European Patent No. EP 1 076 806, and on October 27, 2017, Philips
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`[6]
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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 7 of 39
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`filed a second lawsuit against Garmin in Germany in which it alleged infringement of European
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`Patent No. EP 1 247 229. (Id.). Philips then filed lawsuits against Fitbit in Germany on
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`December 4, 2017 and December 12, 2017. (Id.). Therein, Philips asserted claims for
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`infringement of the same patents at issue in the Garmin actions. (Id.). Both of those patents
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`were listed in Exhibit 1 to Philips’ October 10, 2016 notice letter to Fitbit. (Id., Ex. 1.B).
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`At about the same time when Philips was initiating litigation against Garmin and Fitbit in
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`Germany, Garmin brought a revocation proceeding against European Patent No. EP 1 076 806
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`in the United Kingdom (“UK”). (Id. ¶ 9). Philips filed a counterclaim for infringement of that
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`Patent. (Id.). Garmin then brought a nullity proceeding in Germany against European Patent
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`No. EP 1 076 806 on January 25, 2018. (Id.). After the Patent was found to be valid and
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`infringed in the UK proceeding, Philips and Garmin settled the matter. (Id. ¶ 10). However, the
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`German litigation and nullity proceeding remained pending. (Id.).
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`During 2018 and 2019, Philips and Fitbit engaged in discussions regarding the possibility
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`of resolving their patent disputes, including settlement of the pending European litigation, by
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`entering into a licensing arrangement. (See Def. Ex. D). According to Mr. Tol, Philips also
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`continued to evaluate potential infringement claims against Garmin and Fitbit in the United
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`States and took steps to retain outside counsel for the purpose of filing litigation here. (Tol
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`Decl. ¶ 11). On July 22, 2019, Philips filed its initial complaint against Fitbit in this action and
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`filed a separate lawsuit against Garmin in the District Court for the Central District of California.
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`(Id. ¶ 12). By its claims in this case, Philips alleges that Fitbit has infringed and is continuing to
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`infringe three of its patents, including U.S. Patent No. 6,013,007, U.S. Patent No. 7,088,233 and
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`U.S. Patent No. 8,277,377. (Docket No. 112 ¶ 36 & Counts I-III). Fitbit denies Philips’ claims and
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`[7]
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`

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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 8 of 39
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`has asserted counterclaims against Philips for a declaratory judgment of non-infringement and
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`invalidity with respect to each of the disputed patents. (Docket No. 224).
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`Subsequently, on December 10, 2019, the plaintiff filed a complaint with the United
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`States International Trade Commission (“ITC”). (Tol Decl. ¶ 13). Therein, Philips asserted
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`patent infringement claims against Fitbit and Garmin on a set of patents unrelated to the
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`Patents-in-Suit. (Id.). The ITC declined to issue an exclusion order and Philips is appealing the
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`matter to the Federal Circuit. (Id.).
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`Discovery of Mr. Tol’s Email Communications
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`During discovery in this case, Philips performed a search of Mr. Tol’s email
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`communications and produced 685 documents to Fitbit. (See Def. Mem. at 4; Pl. Opp. Mem.
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`(Docket No. 210) at 1). Additionally, on March 23, 2021, Philips produced a privilege log, which
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`included more than 500 emails that had been written or received by Mr. Tol and were withheld
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`from production based on the attorney-client privilege and/or work product doctrine. (Def. Ex.
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`J). Following a meeting between the parties to discuss Fitbit’s concerns regarding portions of
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`the privilege log, Philips agreed to produce some of the listed documents and update its log.
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`(See Def. Mem. at 4). Philips’ produced a supplemental privilege log of Mr. Tol’s emails on April
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`16, 2021. (Def. Ex. A). The supplemental log listed 464 emails that Philips continued to
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`withhold from production on the grounds of attorney-client privilege and/or work product.
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`(Id.).
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`Fitbit continued to challenge Philips’ claims of privilege and/or work product protection
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`over certain of Mr. Tol’s emails. (See Def. Ex. K). As a result of the parties’ discussions, Philips
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`amended its privilege log a second time on May 28, 2021, and a third time on June 11, 2021.
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`[8]
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`

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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 9 of 39
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`(See Def. Exs. L & M). In connection with this process, the plaintiff “addresse[d] certain ... [of
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`Fitbit’s] requests for additional information for the listed entries and/or correct[ed] errors in
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`prior disclosures.” (Def. Ex. M at 1). It also determined, “upon further review,” to produce
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`additional documents that it initially withheld from discovery. (Id.). However, Fitbit maintained
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`its challenges to approximately 100 emails over which Philips continued to claim protection.
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`(See Tol Decl. ¶¶ 16-43).
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`The parties were unable to resolve their remaining disputes despite their continued
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`efforts to do so. Consequently, Fitbit filed the instant motion to compel by which it is seeking
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`an order directing the plaintiff to produce certain of the documents listed in its privilege log on
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`the grounds that they are not entitled to protection under the attorney-client privilege or the
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`work product doctrine. (Def. Mem. at 1). During a hearing on the motion, this court instructed
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`the parties to make a further attempt to narrow the issues in dispute. Philips has since
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`withdrawn its assertion of work product protection for three of Mr. Tol’s emails and Fitbit has
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`withdrawn its motion to compel production of sixteen of Mr. Tol’s emails. (Docket No. 232 at 1;
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`Docket No. 233 at 2). The parties’ dispute over the remaining emails is now ripe for resolution
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`by this court.
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`Additional factual details relevant to this court’s analysis are described below.
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`III. ANALYSIS
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`Fitbit argues that it is entitled to discovery of the disputed emails for three reasons.
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`First, the defendant equates Mr. Tol with patent agents in the United States based on the fact
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`that he is not licensed as an attorney-at-law in the Netherlands. Patent agents in the United
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`States are not attorneys but are authorized by Congress to engage in the practice of law before
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`[9]
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`

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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 10 of 39
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`the U.S. Patent and Trademark Office (“USPTO”). See In re Queen’s Univ. at Kingston, 820 F.3d
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`1287, 1296-98 (Fed. Cir. 2016) (“Queen’s”) (describing practice of law by patent agents in the
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`United States). The Federal Circuit has recognized a patent-agent privilege that shields
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`communications with non-attorney patent agents acting within the scope of their authority to
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`practice law before the USPTO. Id. at 1302. Fitbit argues that there is no basis, either in U.S. or
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`Dutch law, to apply an attorney-client or patent-agent privilege to “communications exclusively
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`between Dutch patent agents and other non-attorney employees who were not acting at the
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`direction and control of a licensed attorney, and related to matters other than representation
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`before a patent office[.]” (Def. Mem. at 1). Second, Fitbit argues that Philips improperly
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`invokes the attorney-client privilege for communications involving business advice, as opposed
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`to legal advice, such as communications relating to the potential licensing of Philips’ patents.
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`(Id. at 1-2). Third, Fitbit contends that Philips has failed to support its claims of work product
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`for communications dating as far back as 2015 -- four years before it filed its complaint in this
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`case -- because it has not shown that it had a reasonable expectation of litigation in 2015 or at
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`any other time before initiating the instant lawsuit. (Id.). For the reasons that follow, this court
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`finds that Philips has failed to establish that any of the disputed emails are protected by the
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`attorney-client or patent agent privilege regardless of whether U.S. or Dutch law applies.
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`However, Philips has shown that the emails over which it claims work product protection were
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`prepared in anticipation of litigation and have been properly withheld from production.
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`[10]
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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 11 of 39
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`A. Challenge to Philips’ Claim of Attorney-Client Privilege
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`i. Choice of Law
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`The threshold issue raised by Fitbit’s motion to compel communications that Philips has
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`withheld pursuant to the attorney-client privilege is whether U.S. or foreign privilege law
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`governs the parties’ dispute. Fitbit argues that this court should apply U.S. law to determine
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`whether the attorney-client privilege protects the disputed email communications while Philips
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`suggests that Dutch law should govern the privilege analysis with respect to at least some of
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`Mr. Tol’s emails or portions thereof. (See Def. Mem. at 7; Pl. Opp. Mem. at 4; Pl. Sur-Reply
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`Mem. (Docket No. 220) at 5 n.6). This court finds that a handful of the documents must be
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`governed by the Dutch law, while the remaining emails are subject to the law of the United
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`States. In the end, however, the result is the same because Philips has failed to establish that
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`the emails are privileged under the law of either country.
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`The Relevant Test
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`The parties agree that the appropriate test for determining whether U.S. or foreign
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`privilege law applies in this case is the so-called “touching base” test. (Def. Mem. at 5-6; Pl.
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`Opp. Mem. at 4). Courts in this District have defined this test as follows:
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`[i]f ... a communication has nothing to do with the United States or ... only an
`incidental connection to this country, the privilege issue will be determined by
`the law of the foreign nation. If, however, the communication has more than an
`incidental connection to the United States, the court will undertake a more
`traditional analysis and defer to the law of privilege of the nation having the
`most direct and compelling interest in the communication or, at least, that part
`of the communication which mentions the United States. Such interest will be
`determined after considering the parties to and the substance of the
`communication, the place where the relationship was centered at the time of
`the communication, the needs of the international system, and whether the
`application of foreign privilege law would be “clearly inconsistent with important
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`
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`[11]
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`

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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 12 of 39
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`policies embedded in federal law.” Golden Trade[, S.r.L. v. Lee Apparel Co.], 143
`F.R.D. [514,] 521 [S.D.N.Y. 1992].
`
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`VLT Corp. v. Unitrode Corp., 194 F.R.D. 8, 16 (D. Mass. 2000). See also United States v.
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`McLellan, No. 16-cr-10094-LTS, 2018 WL 9439896 at **1-2 (D. Mass. Jan. 19, 2018) (adopting
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`the touching base test as articulated in VLT Corp. v. Unitrode Corp.).
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`As a general matter, “communications relating to legal proceedings in the United States,
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`or that reflect the provision of advice regarding American law, ‘touch base’ with the United
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`States and, therefore, are governed by American law, even though the communication may
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`involve foreign attorneys or a foreign proceeding.” Gucci Am., Inc. v. Guess?, Inc., 271 F.R.D.
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`58, 65 (S.D.N.Y. 2010). “Conversely, communications regarding a foreign legal proceeding or
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`foreign law ‘touch base’ with the foreign country.” Id. Additionally, courts have concluded that
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`the country with “the predominant interest is either the place where the allegedly privileged
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`relationship was entered into or the place in which that relationship was centered at the time
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`the communication was sent.” Anwar v. Fairfield Greenwich Ltd., 982 F. Supp. 2d 260, 264
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`(S.D.N.Y. 2013) (quoting Astra Aktiebolag v. Andrx Pharms., Inc., 208 F.R.D. 92, 98 (S.D.N.Y.
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`2002)).
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`Application of the “Touching Base” Test
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`
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`The record establishes that five of the disputed emails, consisting of document numbers
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`58, 59, 82, 208 and 209 on Philips’ privilege log, must be governed by Dutch law because they
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`have no more than an incidental connection, if any, to the United States. (See Def. Ex. M; Tol
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`Decl. ¶¶ 25, 32, 35). As described by Mr. Tol in a Declaration submitted in support of Philips’
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`opposition to the instant motion, each of these five emails consists of correspondence between
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`Mr. Tol and one or more Dutch Patent Attorneys (as well as, in one instance, a Philips research
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`[12]
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`

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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 13 of 39
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`engineer) and reflects an analysis or discussion of certain of Philips’ patents. (Tol Decl. ¶¶ 25,
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`32, 35). None of the patents discussed in the emails are U.S. patents and none of the patents
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`are at issue in any of the litigation that Philips has brought against Fitbit and Garmin in the
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`United States or elsewhere. (Id.). Therefore, the question whether these documents are
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`privileged must be determined by the law of the foreign nation, which in this case is the
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`Netherlands where Mr. Tol and the other parties to the communications are located and where
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`the relationship between Philips and its Dutch Patent Attorneys was entered. See VLT Corp.,
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`194 F.R.D. at 16 (if “a communication has nothing to do with the United States ... the privilege
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`issue will be determined by the law of the foreign nation.”); Golden Trade S.r.L., 143 F.R.D. at
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`521 (noting that the “process of referring to the law of the place where the allegedly privileged
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`relationship was entered into is ... well recognized” in case law).
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`The record also supports the conclusion that the emails described paragraphs 20, 27
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`and 33 of Mr. Tol’s Declaration touch base with the Netherlands and should be governed by
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`Dutch privilege law as well. 5 According to Mr. Tol, these emails reflect communications that he
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`had with other Dutch Patent Attorneys and relate, at least in part, to Philips’ analysis and pre-
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`suit investigation of potential patents to assert against Fitbit and Garmin. (Tol. Decl. ¶¶ 20, 27,
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`33). While Philips indicates that these documents address U.S. as well as foreign patents, there
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`is no specific evidence linking the communications to the United States or implicating the
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`interests of any country outside the Netherlands. (See id.; Pl. Opp. Mem. at 4). Accordingly,
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`this court finds that even if these emails have more than an incidental connection to the United
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`5 The emails described in paragraphs 20, 27 and 33 of Mr. Tol’s Declaration correspond to entry
`numbers 26, 28, 65-66 and 144 on Philips’ privilege log. (Tol Decl. ¶¶ 20, 27, 33).
`[13]
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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 14 of 39
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`States, the Netherlands has the most direct and compelling interest in the communications and
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`that Dutch privilege law should apply. See Cadence Pharms. v. Fresenius Kabi USA, LLC, 996 F.
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`Supp. 2d 1015, 1019 (S.D. Cal. 2014) (“[i]n the context of patent law, courts [applying the
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`touching base test] often look to the law of the country where legal advice was rendered”);
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`Anwar, 982 F. Supp. 2d at 265 (finding that Magistrate Judge could correctly conclude that
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`communications touched base with the Netherlands where “[t]he Netherlands [wa]s the
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`jurisdiction where the relationship between [the defendant and its unlicensed in-house
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`attorney] was entered into and the place in which that relationship was centered at the time of
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`the communications at issue.”).
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`This court finds that the remaining emails over which Philips is claiming privilege, which
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`consist of the emails described in paragraphs 16-19, 21-24, 26, 29-31, 34, 37, 39 and 41-43 of
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`Mr. Tol’s Declaration, should be governed by the law of the United States.6 It is undisputed
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`that U.S. law applies in this case. With respect to these particular emails, it is undisputed that
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`they involve, at least in part, the enforcement of U.S. patents or contract issues under U.S. law.7
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`(See Def. Mem. at 7; Pl. Opp. Mem. at 4). Accordingly, these documents have more than an
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`6 The communications described in paragraphs 16-19, 21-24, 26, 29-31, 34, 37, 39 and 41-43 of Mr. Tol’s
`Declaration correspond to the following documents listed in Philips’ privilege log: 3-4, 19-21, 24, 30-31,
`35-37, 42-43, 46-48, 60-64, 71-73, 79, 155-56, 299, 349-50, 408, 412-31, 433, 437-38, 440-41, 443, 451,
`458-60, 463-64.
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` While Philips agrees that these communications “arguably ‘touch base’ with the United States because
`they involve the enforcement of a U.S. Patent or a contract dispute under U.S. law,” it notes that “other
`aspects of the same communication[s] would not [touch base with the United States] because they
`relate to the enforcement of non-U.S. patents.” (Pl. Opp. Mem. at 4). However, Philips has failed to
`identify the specific communications to which its argument refers or to present evidence showing that
`the interests of the Netherlands or some other country outweigh the United States’ interests in the
`communications. (See id. at 4-5). In any event, this issue does not need to be addressed further
`because, as detailed infra, Philips has failed to show that any of Mr. Tol’s emails are privileged.
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` 7
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`[14]
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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 15 of 39
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`“incidental connection to this country[.]” VLT Corp., 194 F.R.D. at 16. Moreover, the evidence
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`shows that the United States is “the nation having the most direct and compelling interest in
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`the communication[s] or, at least, that part of the communication[s] which mention[ ] the
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`United States.” Id. As Mr. Tol describes in his Declaration, these communications pertain to
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`Philips’ pre-suit investigation and analysis of the U.S. patents asserted against Fitbit in the
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`instant litigation; advice relating to the preparation of Philips’ October 10, 2016 notice letter to
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`Fitbit, which was sent to Fitbit at its offices in the United States and accused Fitbit of infringing
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`Philips’ “U.S. patents and their foreign counterparts”; and legal advice and feedback from
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`Philips’ U.S. attorneys on issues relating to the enforcement of U.S. patents, amendments to a
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`patent purchase agreement between Philips and an American inventor, and a contract dispute
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`arising under U.S. law. (Tol Decl. ¶¶ 16-19, 21-24, 26, 29-31, 34, 37, 39 and 41-43 & Ex. 1.B
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`thereto). The relevant case law supports the conclusion that these kinds of communications
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`touch base with the United States. See, e.g., Anwar, 982 F. Supp. 2d at 264 (finding no error in
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`Magistrate Judge’s conclusion that communications touched based with the United States
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`where they involved advice regarding American law and concerned litigation based in the
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`United States); Gucci Am., Inc., 271 F.R.D. at 66-7 (communications arising from investigations
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`into alleged violations of U.S. trademarks, which ultimately gave rise to infringement actions in
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`the United States and Italy, touched base with the United States and supported application of
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`U.S. privilege law). Therefore, American law will apply to determine whether these documents
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`are privileged.
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`[15]
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`Case 1:19-cv-11586-FDS Document 292 Filed 01/27/22 Page 16 of 39
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`ii. Application of U.S. Privilege Law
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` All of Philips’ claims in this case arise under federal patent law. Therefore, the question
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`whether, under U.S. law, the emails described in paragraphs 16-19, 21-24, 26, 29-31, 34, 37, 39
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`and 41-43 of Mr. Tol’s Declaration fall within the scope of the attorney-client privilege “must be
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`ascertained by reference to ‘principles of [federal] common law as they may be interpreted ...
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`in the light of reason and experience.’” In re Grand Jury Subpoena (Mr. S), 662 F.3d 65, 70 (1st
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`Cir. 2011) (quoting Fed.R.Evid. 501) (alteration in original). Where, as here, the
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`communications at issue concern infringement and other substantive matters relating to patent
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`law, Federal Circuit law applies to determine whether those documents are discoverable. See
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`In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1298 (Fed. Cir. 2006) (“Federal Circuit law
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`applies when decid