Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 1 of 27
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`
`PHILIPS NORTH AMERICA LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`FITBIT LLC,
`
`
`Defendant.
`
`
`
`
`Civil Action No. 1:19-cv-11586-FDS
`
`
`
`
`DEFENDANT FITBIT LLC’S MEMORANDUM IN OPPOSITION TO PHILIPS’
`MOTION TO STRIKE PORTIONS OF FITBIT’S EXPERT REBUTTAL REPORTS
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`
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`

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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 2 of 27
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`TABLE OF CONTENTS
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`Pages
`
`INTRODUCTION ...............................................................................................................1
`
`FACTUAL BACKGROUND ..............................................................................................2
`
`A.
`
`B.
`
`Fitbit Designated Deposition Witnesses Regarding Non-Infringing
`Alternatives. .............................................................................................................2
`
`Dr. Paradiso’s Opinion Regarding The Lack Of Provisional Support For
`The ’377 Patent Was Raised As Soon As Possible..................................................5
`
`LEGAL STANDARD ..........................................................................................................6
`
`ARGUMENT .......................................................................................................................7
`
`A.
`
`Philips’ Request To Strike Expert Opinions On Non-Infringing
`Alternatives Should Be Denied. ...............................................................................7
`
`1.
`
`2.
`
`3.
`
`4.
`
`Fitbit Designated Multiple Corporate Witnesses On Non-Infringing
`Alternatives. .................................................................................................9
`
`Fitbit Timely Disclosed Its Expert Opinions Regarding Non-
`Infringing Alternatives In Rebuttal Reports. .............................................11
`
`Philips Does Not Identify Any Other Basis That Required Fitbit To
`Disclose Non-Infringing Alternatives During Fact Discovery. .................14
`
`To The Extent Fitbit’s Non-Infringing Alternatives Were Not
`Timely Disclosed, Philips’ Proposed Sanction Of Exclusion Is
`Unwarranted. ..............................................................................................15
`
`B.
`
`Philips’ Request To Strike Dr. Paradiso’s Opinions Regarding The Priority
`Date Of The ’377 Patent Should Be Denied. .........................................................16
`
`1.
`
`2.
`
`Dr. Paradiso’s Opinions Regarding The Priority Date Of The ’377
`Patent Were Timely Disclosed In His Rebuttal Report. ............................17
`
`To The Extent Dr. Paradiso’s Opinions Regarding The Priority
`Date Of The ’377 Patent Were Not Timely, Philips Proposed
`Sanction Of Exclusion Is Unwarranted......................................................19
`
`CONCLUSION ..................................................................................................................20
`
`
`
`I.
`
`II.
`
`III.
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`IV.
`
`V.
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`
`i
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`

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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 3 of 27
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`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Pages
`
`Acorn Semi, LLC v. Samsung Elecs. Co., Ltd.,
`No. 2:19-CV-00347-JRG, 2021 U.S. Dist. LEXIS 225373 (E.D. Tex. Apr. 29,
`2021) ................................................................................................................................. 10
`
`Aro Mfg. Co. v. Convertible Top Replacement Co.,
`377 U.S. 476 (1964) ............................................................................................................ 6
`
`Aylus Networks, Inc. v. Apple Inc.,
`No. 13-CV-04700-EMC (KAW), 2015 WL 6667460 (N.D. Cal. Nov. 2, 2015) ............. 15
`
`Berwind Prop. Grp. Inc. v. Env’t Mgmt. Grp., Inc.,
`233 F.R.D. 62 (D. Mass. 2005) ......................................................................................... 10
`
`Biedermann Techs. GmbH & Co. KG v. K2M, Inc.,
`No. 2:18-CV-585, 2020 WL 4720083 (E.D. Va. May 14, 2020) ..................................... 11
`
`Centricut, LLC v. Esab Grp., Inc.,
`390 F.3d 1361 (Fed. Cir. 2004)......................................................................................... 13
`
`Cruz-Vázquez v. Mennonite Gen. Hosp., Inc.,
`613 F.3d 54 (1st Cir. 2010) ................................................................................................. 6
`
`DataTreasury Corp. v. Wells Fargo & Co.,
`No. 2:06-CV-72 DF, 2011 WL 8810604 (E.D. Tex. Aug. 2, 2011) ................................. 12
`
`Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009)......................................................................................... 12
`
`Esposito v. Home Depot U.S.A., Inc.,
`590 F.3d 72 (1st Cir. 2009) ................................................................................................. 7
`
`Glass Dimensions, Inc. ex rel. Glass Dimensions, Inc. Profit Sharing Plan & Tr. v. State
`St. Bank & Tr. Co.,
`290 F.R.D. 11 (D. Mass. 2013) ......................................................................................... 17
`
`LaserDynamics, Inc. v. Quanta Computer, Inc.,
`No. 2:06-CV-348, 2011 WL 197869 (E.D. Tex. Jan. 20, 2011), objections
`overruled, No. 2:06-CV-348, 2011 WL 13196509 (E.D. Tex. Jan. 28, 2011) ................. 12
`
`Lawes v. CSA Architects & Engineers LLP,
`963 F.3d 72 (1st Cir. 2020) ................................................................................................. 7
`
`ii
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 4 of 27
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`TABLE OF AUTHORITIES (cont’d)
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`Pages
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`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009)..................................................................................... 6, 10
`
`Medisim, Ltd. v. Best Med. LLC,
`861 F. Supp. 2d 158 (S.D.N.Y. 2012)............................................................................... 11
`
`Neuberger Berman Real Estate Income Fund, Inc. v. Lola Brown Tr. No. 1B,
`No. AMD 04-3056, 2006 WL 6323520 (D. Md. Mar. 17, 2006) ..................................... 15
`
`Plumley v. Mockett,
`836 F. Supp. 2d 1053 (C.D. Cal. 2010) ...................................................................... 11, 13
`
`Prism Techs., LLC v. T-Mobile USA Inc.,
`No. 8:12CV124, 2015 WL 5883764 (D. Neb. Oct. 8, 2015) ............................................ 10
`
`PSN Ill. LLC v. Abbott Labs,
`No. 09-c-5879, 2012 WL 5381278 (N.D. Ill. Oct. 31, 2012) ........................................... 11
`
`Riles v. Shell Expl. & Prod. Co.,
`298 F.3d 1302 (Fed. Cir. 2002)..................................................................................... 6, 10
`
`Salazar v. HTC Corp.,
`No. 216CV01096JRGRSP, 2018 WL 2033709 (E.D. Tex. Mar. 28, 2018) ............... 10, 12
`
`Samaria Iglesia Evangelica, Inc. v. Lorenzo,
`No. 18-CV-10004-LTS, 2019 WL 5698444 (D. Mass. Nov. 1, 2019) ............................... 9
`
`Samsung Elecs. Co. v. Nvidia Corp.,
`314 F.R.D. 190 (E.D. Va. 2016) ....................................................................................... 15
`
`Skyhook Wireless, Inc. v. Google, Inc.,
`No. 10-11571-RWZ, 2015 U.S. Dist. LEXIS 194007 (D. Mass. Feb. 18, 2015) ......... 6, 11
`
`Smart Skins LLC v. Microsoft Corp.,
`No. C15-544-MJP, 2016 WL 4148091 (W.D. Wash. July 1, 2016) ................................. 12
`
`Sullivan v. Glock, Inc.,
`175 F.R.D. 497 (D. Md. 1997) .......................................................................................... 15
`
`Trustees of Bos. Univ. v. Everlight Elecs. Co.,
`No. 12-CV-11935-PBS, 2014 WL 5786492 (D. Mass. Sept. 24, 2014) ............................. 9
`
`Viasat, Inc. v. Space Sys./Loral, Inc.,
`No. 3:12-cv-260, 2014 WL 11813867 (S.D. Cal. Jan. 31, 2014) ............................... 11, 12
`
`Zampierollo-Rheinfeldt v. Ingersoll-Rand de Puerto Rico, Inc.,
`999 F.3d 37 (1st Cir. 2021) ................................................................................................. 6
`
`
`
`iii
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 5 of 27
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`TABLE OF AUTHORITIES (cont’d)
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`Pages
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`RULES
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`Fed. R. Civ. P. 26 .............................................................................................................. 6, 7, 8, 14
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`Fed. R. Civ. P. 26(a) ............................................................................................................... 10, 13
`
`Fed. R. Civ. P. 26(a)(2)(D) ............................................................................................................. 5
`
`Fed. R. Civ. P. 37 ...................................................................................................................... 8, 14
`
`Fed. R. Civ. P. 37(c)(1) ............................................................................................................. 6, 14
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`iv
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 6 of 27
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`I.
`
`INTRODUCTION
`
`Defendant Fitbit LLC (“Fitbit”) respectfully requests that the Court deny Plaintiff Philips
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`North America LLC’s (“Philips”) Motion to Strike Portions of Fitbit’s Expert Rebuttal Reports
`
`(D.I. 300 (“Motion”); D.I. 301 (“Philips Memo”).) Philips asks this Court to strike two aspects of
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`Fitbit’s expert rebuttal reports as allegedly untimely: (1) all opinions and testimony from Fitbit’s
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`technical expert, Dr. Joseph Paradiso, and damages expert, Ms. Lauren Kindler, regarding non-
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`infringing alternatives to the asserted claims of U.S. Patent No. 8,277,377 (the “’377 patent”); and
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`(2) Dr. Paradiso’s opinion that if claim 1 of the ’377 patent is interpreted to encompass more than
`
`one server, then the ’377 patent is not entitled to the priority date of its provisional application
`
`because the provisional application does not disclose embodiments using more than one server.
`
`Philips’ requests should be denied.
`
`First, Philips’ request that the Court strike Fitbit’s non-infringing alternatives is an attempt
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`to reward Philips for its own repeated failures to take discovery on that issue throughout this case.
`
`Philips did not issue an interrogatory on non-infringing alternatives; did not question Fitbit’s
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`corporate witnesses about non-infringing alternatives, despite confirming on the record that each
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`witness was prepared to testify about that topic; and did not question Fitbit’s expert witnesses
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`about non-infringing alternatives. Philips’ claim that Fitbit refused to provide corporate witnesses
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`on non-infringing alternatives during fact discovery is false. Fitbit provided—and Philips
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`deposed—multiple witnesses that Fitbit expressly designated on the topic of non-infringing
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`alternatives. Philips, nonetheless, failed to ask those witnesses about the topics that Philips now
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`seeks to exclude.
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`Philips’ argument that Fitbit’s expert opinions regarding non-infringing alternatives should
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`have been disclosed in opening reports is similarly without merit. It is Philips’ burden to prove its
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`damages from Fitbit’s alleged infringement. As such, courts around the country have recognized
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 7 of 27
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`that expert opinions on non-infringing alternatives are appropriately the subject of rebuttal reports.
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`Philips does not offer any governing authority to the contrary.
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`Second, Philips’ request that the Court strike ¶ 245 of Dr. Paradiso’s rebuttal report
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`regarding the priority date of the ’377 patent rehashes the same claim construction dispute that this
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`Court has already elected to defer until after dispositive motions—namely, the appropriate
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`construction of the “server” terms of the asserted claims. (See D.I. 294 (denying Fitbit’s motion
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`to construe “server” terms without prejudice and noting that “[t]he Court is prepared to revisit that
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`issue as appropriate after resolution of any motions for summary judgement”).) Dr. Paradiso’s
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`opinion regarding the priority date of the ’377 patent follows directly from that dispute. In
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`particular, Dr. Paradiso opines that the provisional application to which the ’377 patent claims
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`priority does not provide written description for the multiple servers that Philips contends are
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`encompassed by the asserted claims.
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`As Fitbit explained at length in its previous briefing, the parties’ disagreement as to the
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`scope of the “server” terms first crystallized when Philips served its opening infringement report
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`outlining its expansive view of the ’377 patent claim scope, and thus could not have been addressed
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`prior to expert reports. (See D.I. 276 at 7-11.) Thus, Dr. Paradiso’s opinion regarding the
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`implications of that disputed construction was timely.
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`Finally, as to both issues, Philips’ request to strike Fitbit’s expert opinions should be denied
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`because the alleged harm to Philips can be addressed by less severe and more tailored sanctions,
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`namely by permitting limited additional fact and/or expert discovery.
`
`II.
`
`FACTUAL BACKGROUND
`
`A.
`
`Fitbit Designated Deposition Witnesses Regarding Non-Infringing
`Alternatives.
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`Fitbit designated two corporate witnesses on the topic of non-infringing alternatives.
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`2
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 8 of 27
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`Philips served its notice of 30(b)(6) deposition of Fitbit on August 24, 2020. (Ex. 1 (“30(b)(6)
`
`Notice”).) On September 4, 2020, Fitbit provided its objections and responses. (Ex. 2 (“30(b)(6)
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`Response”).) Philips’ 30(b)(6) Notice contained, among others, Topics 5 and 52, which nominally
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`dealt with the similar subject matter of design-arounds and non-infringing alternatives. (See
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`(30(b)(6) Notice at 7, 15.) Fitbit’s 30(b)(6) Response objected to both topics, but from the outset
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`Fitbit agreed to designate a witness on Topic 5. (See 30(b)(6) Response at 7, 34.) The parties
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`subsequently discussed the availability and designations of Fitbit’s 30(b)(6) witnesses, and Fitbit
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`stated in writing that it would provide witnesses on the issue of non-infringing alternatives. In
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`correspondence dated January 12, 2021, Fitbit informed Philips that it would designate multiple
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`corporate witnesses “as to non-infringing alternatives.” (Ex. 3 at 1 (annotated for clarity).)1 Those
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`designations were then confirmed during the depositions by the witnesses themselves:
`
`Q: [D]o you understand that you’re designated, at least in part, for
`Topic No. 5?
`[Fitbit Counsel: As to non-infringing alternatives.]
`Q: As to non-infringing alternatives.
`A: I do.
`
`(Ex. 4 (Krems Dep. Tr.) at 72:24-73:10.)
`
`
`Q: Do you understand that you’re being designated for Topic No. 5,
`but limited to non-infringing alternatives and subject to Fitbit’s
`objections?
`A: Yes.
`
`(Ex. 5 (Boccon-Gibod Dep. Tr.) at 30:13-17.) Despite confirmation from the witnesses that they
`
`were designated as to non-infringing alternatives and were prepared to testify on that topic, counsel
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`1 Philips makes much ado about the fact that these designations were made with respect to Topic
`5, not Topic 52. This is discussed in more detail in the argument below, but in short, Philips’
`argument elevates form over substance. The important point is that Fitbit designated witnesses on
`the subject matter of non-infringing alternatives, as Philips requested, and Philips confirmed those
`designations on the record.
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`3
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 9 of 27
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`for Philips proceeded to ask no substantive questions of either witness regarding non-infringing
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`alternatives.2
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`For example, Philips did not ask any substantive questions of Fitbit’s witness, Mr. Ryan
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`Krems, regarding either non-infringing alternatives or design-arounds. (See Ex. 4 (Krems Dep.
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`Tr.) at 71:21-75:11.) As to Fitbit’s witness, Mr. Gilles Boccon-Gibod, Philips asked only the
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`following:
`
`Q: Are you aware of any attempts at Fitbit to design around the
`patents asserted against Fitbit in this lawsuit?
`A: I am not aware of any such thing.
`
`
` (Ex. 5 (Boccon-Gibod Dep. Tr.) at 31:5-7.) That query, however, dealt only with Fitbit’s actual
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`attempts to design around the ’377 patent, not non-infringing alternatives that Fitbit could have
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`implemented at the time of the hypothetical negotiation. In short, Philips failed to actually ask the
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`Fitbit witnesses specifically designated “as to non-infringing alternatives” any questions about
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`non-infringing alternatives. Similarly, Philips never propounded any interrogatories or other
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`discovery requests directed to non-infringing alternatives. (See, e.g., Exs. 6-7 (Philips’
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`Interrogatories).)
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`
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`On December 22, 2021, Fitbit’s technical and damages experts, Dr. Joseph Paradiso and
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`Ms. Lauren Kindler, submitted their rebuttal reports. (See D.I. 302-5 (“Paradiso Rbt. Rpt.”); D.I.
`
`302-7 (“Kindler Rbt. Rpt.”).) Those reports discussed three potential non-infringing alternatives
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`that Fitbit could have implemented at the time of the hypothetical negotiation between Fitbit and
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`Philips in 2016. (See Paradiso Rbt. Rpt. ¶¶ 328-47; Kindler Rbt. Rpt. ¶¶ 110-112.) In ascertaining
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`the practicality and costs of implementing those three potential non-infringing alternatives, Dr.
`
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`2 Philips’ failure to ask any substantive questions about non-infringing alternatives was not for
`lack of time. Philips concluded its depositions of each of the designated witnesses with hours of
`additional time available for questioning.
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`4
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 10 of 27
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`Paradiso and Ms. Kindler relied, in part, upon conversations with two Fitbit employees, namely
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`Mr. Boccon-Gibod and Mr. Buddy Herkenham, both of whom Philips deposed during fact
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`discovery. (See Paradiso Rbt. Rpt. ¶¶ 331-33, 337-40, 345-46; Kindler Rbt. Rpt. ¶ 111 n. 337-38,
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`339-40.) In particular, Messrs. Boccon-Gibod and Herkenham informed Fitbit’s experts of the
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`approximate costs and engineering time that would have been needed to implement the three non-
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`infringing alternatives in 2016 (i.e., the time of a hypothetical negotiation). (Id.)
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`
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`Philips deposed Ms. Kindler and Dr. Paradiso on January 27 and February 2, 2022. (See
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`Ex. 8 (Kindler Dep. Tr.); Ex. 9 (Paradiso Dep. Tr.).) During those depositions, Philips did not ask
`
`any substantive questions regarding the non-infringing alternatives themselves. (See, e.g., Ex. 9
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`(Paradiso Dep. Tr.) at 218:4-18.) Philips only inquired about the substance of Ms. Kindler’s
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`conversations with Messrs. Boccon-Gibod and Herkenham regarding the costs associated with
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`implementing Fitbit’s non-infringing alternatives (see Ex. 8 (Kindler Dep. Tr.) at 37:22-43:4), and
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`no such questions were asked of Dr. Paradiso, Fitbit’s technical expert. (See Ex. 9 (Paradiso Dep.
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`Tr.) at 282:22-285:21.)3
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`B.
`
`Dr. Paradiso’s Opinion Regarding The Lack Of Provisional Support For The
`’377 Patent Was Raised As Soon As Possible.
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`In addition to his discussion of non-infringing alternatives, Dr. Paradiso’s rebuttal report
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`also set forth his opinions regarding the appropriate priority date for the ’377 patent given Philips’
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`recently disclosed contention that the asserted claims may encompass more than one server.
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`Specifically, Dr. Paradiso opined that, because the provisional application to which the ’377 patent
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`claims priority only disclosed a single server, the ’377 patent is not entitled to the priority date of
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`its provisional under Philips’ interpretation of the claim scope. (Paradiso Rbt. Rpt. ¶ 245.) This
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`3 Philips appears to concede that Ms. Kindler was responding at least in part to the opening report
`of its damages expert, Dr. Akemann, with respect to non-infringing alternatives. (See Memo at 9
`n.6.)
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`5
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 11 of 27
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`opinion was included in Dr. Paradiso’s rebuttal report because the first time Philips clearly
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`indicated its belief that ’377 patent claim 1 encompasses more than one server was in the opening
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`report of its technical expert, Dr. Thomas Martin. (See, e.g., D.I. 276 at 7-11.)
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`III. LEGAL STANDARD
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`Rule 26(a) requires the disclosure of expert testimony “at the times and in the sequence
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`that the court orders.” Fed. R. Civ. P. 26(a)(2)(D). The operative Scheduling Order in this case
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`directed the parties to file “[o]pening reports regarding issues as to which a party bears the burden,”
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`followed by rebuttal reports. (D.I. 231.)
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`Whether the patentee alleges damages in the form of lost profits4 or a reasonable royalty,
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`“[t]he burden of proving damages falls on the patentee.” Lucent Techs., Inc. v. Gateway, Inc., 580
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`F.3d 1301, 1324 (Fed. Cir. 2009). In either case, the appropriate scope of damages is “the
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`difference between [the patentee’s] pecuniary condition after the infringement, and what his
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`condition would have been if the infringement had not occurred.” Aro Mfg. Co. v. Convertible
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`Top Replacement Co., 377 U.S. 476, 507 (1964) (internal quotations omitted). “This formulation
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`requires the patentee to reconstruct the market, by definition a hypothetical enterprise, to project
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`economic results that did not occur.” Riles v. Shell Expl. & Prod. Co., 298 F.3d 1302, 1311 (Fed.
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`Cir. 2002). Because an economically rational defendant would presumably take advantage of
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`available non-infringing alternatives—rather than leaving the market altogether or paying a
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`relatively more expensive licensing fee—a patentee must consider whether such alternatives are
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`indeed available when reconstructing the hypothetical market under a lost profit or reasonable
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`royalty theory. See id. (“The economic relationship between the patented method and non-
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`infringing alternative methods, of necessity, would limit the hypothetical negotiation.”); Skyhook
`
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`4 Philips does not allege lost profits damages in this case.
`
`6
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 12 of 27
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`
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`Wireless, Inc. v. Google, Inc., No. 10-11571-RWZ, 2015 U.S. Dist. LEXIS 194007, at *39 (D.
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`Mass. Feb. 18, 2015) (noting that the patentee bears the burden to show the absence of non-
`
`infringing alternatives when claiming lost profit damages).
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`If an alleged violation of Rule 26 does not actually harm the aggrieved party, courts should
`
`decline to invoke the exclusionary penalty provided for by Rule 37(c)(1). See Cruz-Vázquez v.
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`Mennonite Gen. Hosp., Inc., 613 F.3d 54, 58 n.1 (1st Cir. 2010). “Furthermore, even when there
`
`is harm to a party, ‘[p]reclusion is not strictly required,’” where other remedies may suffice.
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`Zampierollo-Rheinfeldt v. Ingersoll-Rand de Puerto Rico, Inc., 999 F.3d 37, 47 (1st Cir. 2021).
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`Rather, “[w]hen noncompliance occurs, the ordering court should consider the totality of events
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`and then choose from the broad universe of available sanctions in an effort to fit the punishment
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`to the severity and circumstances of the violation.” Lawes v. CSA Architects & Engineers LLP,
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`963 F.3d 72, 91 (1st Cir. 2020). Accordingly, when determining the appropriate sanction for Rule
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`26 violations, courts should consider whether lesser, more tailored sanctions would address the
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`alleged harm. See Esposito v. Home Depot U.S.A., Inc., 590 F.3d 72, 80 (1st Cir. 2009).
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`IV. ARGUMENT
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`Philips moves to strike not only Dr. Paradiso’s and Ms. Kindler reliance on the factual
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`information provided by Messrs. Boccon-Gibod and Herkenham, but all opinions and testimony
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`regarding non-infringing alternatives, as well as Dr. Paradiso’s opinion regarding the appropriate
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`priority date of the ’377 patent. (Motion at 1; Memo at 1.)
`
`A.
`
`Philips’ Request To Strike Expert Opinions On Non-Infringing Alternatives
`Should Be Denied.
`
`Philips argues that Fitbit’s expert testimony on non-infringing alternatives should be
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`stricken because Fitbit “never disclosed its theory of non-infringing alternatives during fact
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`7
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 13 of 27
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`discovery and even refused to designate a 30(b)(6) witness on this topic.” (Memo at 10.) But that
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`argument is built on fundamentally flawed premises.
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`Contrary to Philips’ assertion, Fitbit explicitly designated multiple witnesses “as to non-
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`infringing alternatives.” Philips simply failed to ask those witnesses about any subject matter that
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`it now moves to strike. Philips’ focus on passing and irrelevant references to topic numbers cannot
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`overcome that indisputable fact.
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`Further, Philips provides no legal basis for its contention that Fitbit’s non-infringing
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`alternatives should have been disclosed in Fitbit’s opening invalidity report. It is Philips’ burden
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`to prove its damages. As result, and as courts around the country have held, Fitbit was not
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`obligated to address non-infringing alternatives in its opening report. Philips has not identified
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`any governing authority to the contrary.
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`Finally, Philips fails to identify any other basis, either in the Federal or Local Rules or in
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`its own discovery requests, that required Fitbit to independently disclose its non-infringing
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`alternatives during fact discovery. Indeed, the Local Rules require no such disclosure, see L.R.
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`16.6(d)(4), and Philips did not serve an interrogatory or any other discovery request asking that
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`Fitbit disclose this information before expert reports. As such, Philips cannot show any predicate
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`violation of Rule 26 and there is no basis for sanctions under Rule 37.
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`Regardless, there is no reason to strike Fitbit’s expert opinions on non-infringing
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`alternatives because a far lesser sanction would remedy any cognizable prejudice to Philips. In
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`particular, should the Court find that Fitbit’s disclosure of non-infringing alternatives was
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`untimely, not substantially justified, and not harmless, the Court could permit Philips another
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`opportunity to take depositions of Fitbit’s witnesses limited to the topic of non-infringing
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`alternatives and/or allow Philips’ infringement and damages experts, Dr. Martin and Dr. Michael
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 14 of 27
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`Akemann, to submit brief reply reports addressing the same—not strike Fitbit’s expert opinions
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`on non-infringing alternatives in their entirety. Philips does not identify any reason that such a
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`remedy would be insufficient—indeed, Philips does not identify any specific prejudice from
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`Fitbit’s alleged late disclosure at all.
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`1.
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`Fitbit Designated Multiple Corporate Witnesses On Non-Infringing
`Alternatives.
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`Philips’ Motion is largely premised on the contention that Fitbit refused to provide
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`corporate witnesses prepared to testify on non-infringing alternatives. That contention is incorrect.
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`Fitbit designated multiple corporate witnesses “as to non-infringing alternatives,” (Ex. 3 at 1), and
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`Philips itself confirmed as much during those witnesses’ depositions. (Ex. 4 (Krems Dep. Tr.) at
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`72:24-73:10; Ex. 5 (Boccon-Gibod Dep. Tr.) at 30:13-17.) Philips failed to ask Fitbit’s witnesses
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`about non-infringing alternatives or their factual predicates, just as it failed to propound an
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`interrogatory or other discovery request on those topics.
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`Philips makes much of the fact that Fitbit’s designations “as to non-infringing alternatives”
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`were allegedly limited to the context of Topic 5 of Philips’ 30(b)(6) Notice, but that is nothing
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`more than misdirection. (Memo at 10-13.) Fitbit’s express designations—“as to non-infringing
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`alternatives”—were clear and explicit. It is that language, not passing references to topic numbers,
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`that controls. To the extent that Philips was unsure of what subject matter Fitbit’s witnesses were
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`prepared to discuss, Philips could have sought clarification from Fitbit, either in the meet and
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`confer process or at the deposition when the witnesses testified they were prepared to address non-
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`infringing alternatives. It did not. Indeed, had Philips actually asked Fitbit’s witnesses any
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`questions regarding potential non-infringing alternatives, it would have discovered that—just as
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`Fitbit expressly told Philips—Fitbit had provided witnesses prepared to testify on that topic.
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`Philips’ failure to do so is no justification for the severe and unwarranted sanction it now requests.
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 15 of 27
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`Philips’ cited cases explaining that corporations are generally bound by the testimony (or
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`lack thereof) of their 30(b)(6) witnesses are not to the contrary. (See Memo at 6, 12-13.) In the
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`first instance, many of the cases that Philips cites are simply irrelevant to the dispute at hand. See,
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`e.g., Samaria Iglesia Evangelica, Inc. v. Lorenzo, No. 18-CV-10004-LTS, 2019 WL 5698444, at
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`*4 (D. Mass. Nov. 1, 2019) (concerning decision to limit evidence considered at summary
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`judgment to sources identified by corporate witness). Philips’ Motion does not ask the Court to
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`bind Fitbit to any testimony from its corporate witnesses regarding non-infringing alternatives.
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`Nor could it, because Philips failed to take any testimony about non-infringing alternatives.
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`Likewise, Philips’ cases concerning instances where a corporate witness was unprepared
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`or refused to testify on a topic, or where a party unjustifiably deprived the other of requested
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`discovery, are inapplicable. See, e.g., Trustees of Bos. Univ. v. Everlight Elecs. Co., No. 12-CV-
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`11935-PBS, 2014 WL 5786492, at *5 (D. Mass. Sept. 24, 2014) (declining to grant a motion to
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`compel additional testimony from allegedly unprepared 30(b)(6) witness); Berwind Prop. Grp.
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`Inc. v. Env’t Mgmt. Grp., Inc., 233 F.R.D. 62, 64 (D. Mass. 2005) (same); Acorn Semi, LLC v.
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`Samsung Elecs. Co., Ltd., No. 2:19-CV-00347-JRG, 2021 U.S. Dist. LEXIS 225373, at *3 (E.D.
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`Tex. Apr. 29, 2021) (striking expert testimony on non-infringing alternatives where corporate
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`witness “did not testify on that topic when questioned” thereby depriving plaintiff of discovery);
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`Prism Techs., LLC v. T-Mobile USA Inc., No. 8:12CV124, 2015 WL 5883764, at *3 (D. Neb. Oct.
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`8, 2015) (striking expert testimony on non-infringing alternatives where accused infringer “fail[ed]
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`to produce any documents or witnesses on this issue” and did not disclose the alternatives in
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`interrogatory response).
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`Fitbit did not deprive Philips of discovery on non-infringing alternatives. Instead, Fitbit
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`designated and prepared corporate witnesses to testify on non-infringing alternatives and those
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`Case 1:19-cv-11586-FDS Document 318 Filed 02/23/22 Page 16 of 27
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`witnesses did not refuse to answer questions on that topic. As such, these cases offer no support
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`for Philips’ Motion.
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`2.
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`Fitbit Timely Disclosed Its Expert Opinions Regarding Non-Infringing
`Alternatives In Rebuttal Reports.
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`Philips’ argument that the Court’s Scheduling Order required Fitbit to disclose its non-
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`infringing alternatives in opening reports, and that Fitbit violated Rule 26(a) by instead addressing
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`that issue in rebuttal reports, is based on legal error. (See Memo at 7-10.) The Scheduling Order
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`directed the parties to file “[o]pening expert reports regarding issues as to which a party bears the
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`burden.” (See D.I. 231.) But it is Philips’ burden to prove the damages it would have obtained
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`but for Fitbit’s alleged infringement. Lucent, 580 F.3d at 1324. To do so, Philips is required to
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`reconstruct the market that would have governed during a hypothetical negotiation—an inquiry
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`that involves the consideration of available non-infringing alternatives. Riles, 298 F.3d at 1313.
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`It follows that it is Philips’—not Fitbit’s—burden to show the absence of non-infringing
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`alternatives. See, e.g., Salazar v. HTC Corp., No. 216CV01096JRGRSP, 2018 WL 2033709, at
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`*3 (E.D. Tex. Mar. 28, 2018) (finding that patentee held “burden of proving there are no acceptable
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`non-infringing alternatives” in reasonable royalty determination). Indeed, in the context of a lost
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`profit analysis—which places an identical “but for” causal limitation on the patentee’s damages—
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`this court has previously noted that the “correct legal standard” places the burden on the patentee,
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`i.e. Philips, to “prove the absence of acceptable non-infringing alternatives.” Skyhook Wireless,
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`Inc., 2015 U.S. Dist. LEXIS 194007, at *39; see also Biedermann Techs. GmbH & Co. KG v.
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`K2M, Inc., No. 2:18-CV-585, 2020 WL 4720083, at *4 (E.D. Va. May 14, 2020) (“Whether non-
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`infringing alternatives are available or unavailable, the plainti