Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 1 of 26
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`
`PHILIPS NORTH AMERICA LLC,
`
`
`Plaintiff,
`
`
`
`v.
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`
`FITBIT LLC,
`
`
`
`
`Defendant.
`
`
`
`
`Civil Action No. 1:19-cv-11586-FDS
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`
`
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`DEFENDANT FITBIT LLC’S MEMORANDUM IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT OF NONINFRINGEMENT OF U.S. PATENT NO. 8,277,377
`BASED ON PLAINTIFF’S FAILURE OF PROOF
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 2 of 26
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`
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`TABLE OF CONTENTS
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`Pages
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`I.
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`II.
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`III.
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`IV.
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`INTRODUCTION ...............................................................................................................1
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`STATEMENT OF UNDISPUTED MATERIAL FACTS ..................................................1
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`LEGAL STANDARD FOR SUMMARY JUDGMENT .....................................................5
`
`FITBIT IS ENTITLED TO SUMMARY JUDGMENT OF
`NONINFRINGEMENT FOR EIGHT ACCUSED DEVICES BASED ON
`PHILIPS’ FAILURE OF PROOF ........................................................................................6
`
`A.
`
`B.
`
`C.
`
`Relevant Legal Standards Regarding Proof Of Direct Infringement .......................6
`
`On-Point Federal Circuit Cases Support The Present Motion .................................6
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`Argument ...............................................................................................................11
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`1.
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`2.
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`Philips Has No Evidence Of Any Fitbit User Performing Dr.
`Martin’s Step 3 With The Eight Fitbit Wearables, And The Eight
`Fitbit Wearables Do Not Necessarily Perform Step 3 ...............................12
`Philips Has No Evidence Of Any Fitbit User Performing
`a.
`Dr. Martin’s Step 3 With The Eight Fitbit Wearables ...................12
`
`b.
`
`The Eight Fitbit Wearables Do Not Necessarily Perform
`Dr. Martin’s Step 3 ........................................................................12
`
`Philips Has No Evidence Of Any Fitbit User Performing Step 4 Of
`Dr. Martin’s Accused Method With The Eight Fitbit Wearables,
`And The Eight Fitbit Wearables Do Not Necessarily Perform Step
`4..................................................................................................................14
`Philips Has No Evidence Of Any Fitbit User Performing
`a.
`Dr. Martin’s Step 4 With The Eight Fitbit Wearables ...................15
`
`b.
`
`The Eight Fitbit Wearables Do Not Necessarily Perform
`Dr. Martin’s Step 4 ........................................................................18
`
`D.
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`Conclusion .............................................................................................................19
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`CONCLUSION ..................................................................................................................20
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`V.
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`i
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 3 of 26
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`
`
`TABLE OF AUTHORITIES
`
`Pages
`
`Cases
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`ACCO Brands, Inc. v. ABA Locks Mfr. Co.,
` 501 F.3d 1307 (Fed. Cir. 2007).......................................................................... 6, 9, 14, 19
`
`Anderson v. Liberty Lobby, Inc.,
` 477 U.S. 242 (1986) ........................................................................................................... 6
`
`Arthur A. Collins, Inc. v. N. Telecom Ltd.,
`216 F.3d 1042 (Fed. Cir. 2000)........................................................................................... 5
`
`Celotex Corp. v. Catrett,
` 477 U.S. 317 (1986) ........................................................................................................... 5
`
`Dynacore Holdings Corp. v. U.S. Philips Corp.,
` 363 F.3d 1263 (Fed. Cir. 2004).......................................................................................... 6
`
`E-Pass Techs., Inc. v. 3Com Corp.,
`473 F.3d 1213 (Fed. Cir. 2007)........................................................................... 7, 8, 11, 20
`
`Fujitsu Ltd. v. Netgear Inc.,
` 620 F.3d 1321 (Fed. Cir. 2010).............................................................................. 6, 11, 19
`
`Intel Corp. v. ITC,
` 946 F.2d 821 (Fed. Cir. 1991)...................................................................................... 6, 19
`
`Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc.,
` 152 F.3d 1368 (Fed. Cir. 1998).......................................................................................... 7
`
`Medtronic, Inc. v. Mirowski Fam. Ventures, LLC,
` 571 U.S. 191 (2014) ........................................................................................................... 5
`
`Telemac Cellular Corp. v. Topp Telecom, Inc.,
` 247 F.3d 1316 (Fed. Cir. 2001).......................................................................................... 5
`
`Traxcell Techs., LLC v. Sprint Commc’ns Co. LP,
` 15 F.4th 1121 (Fed. Cir. 2021) .......................................................................................... 5
`
`Statutes
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`35 U.S.C. § 112 ............................................................................................................................... 1
`
`Rules
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`Fed. R. Civ. P. 56(a) ................................................................................................................... 1, 5
`
`ii
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 4 of 26
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`TABLE OF AUTHORITIES (cont’d)
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`Pages
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`Fed. R. Civ. P. 56(c) ....................................................................................................................... 5
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`Fed. R. Evid. 801(c) ...................................................................................................................... 15
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`Fed. R. Evid. 802 .......................................................................................................................... 15
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`Local Rule 56.1 ............................................................................................................................... 1
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`iii
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 5 of 26
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`I.
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`INTRODUCTION
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`In order to prove direct infringement, Philips must show that either: (1) at least one specific
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`instance of direct infringement has occurred for each accused Fitbit wearable or (2) use of the
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`accused Fitbit wearables necessarily infringes. Philips and its expert, Dr. Martin, do not cite to
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`any evidence from which a reasonable juror could conclude that anyone has ever actually used
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`eight of the nine accused Fitbit wearables to allegedly perform the patented method of U.S. Patent
`
`No. 8,277,377 (the “’377 patent”). Dr. Martin also admits that these devices do not necessarily
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`infringe. Thus, summary judgment of noninfringement is warranted for these eight devices.1
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`II.
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`STATEMENT OF UNDISPUTED MATERIAL FACTS
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`Fitbit presents the following numbered statement of undisputed material facts pursuant to
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`Local Rule 56.1 and Federal Rule of Civil Procedure 56(a). Fitbit may present additional
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`undisputed material facts or reply to Philips’ allegations regarding Fitbit’s statement of undisputed
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`material facts in its reply brief, if appropriate.
`
`1.
`
`The ’377 patent is the only remaining, non-stayed asserted patent in this case. (See,
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`e.g., Dkt. 112 (Second Amended Complaint, asserting ’007, ’233, and ’377 patents); Dkt. 212 at
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`12-21 (finding asserted ’007 claims invalid as indefinite under 35 U.S.C. § 112); Dkt. 251
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`(stipulating to stay proceedings with respect to ’233 patent given PTAB’s final written decision
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`that all asserted claims of the ’233 patent are unpatentable).)
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`2.
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`’377 patent claims 1, 4, 5, 6, 9, and 12 are the only remaining asserted claims in
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`this case. (See, e.g., Ex. 2,2 ¶ 2.)
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`3.
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`’377 patent claim 1 is a method claim and the only remaining asserted independent
`
`
`1 The eight Fitbit wearables subject to this motion are the Alta HR, Blaze, Charge 3, Inspire HR,
`Ionic, Versa, Versa 2, and Versa Lite (the “eight Fitbit wearables”).
`2 All cited exhibits are attached to the Declaration of David J. Shaw, filed concurrently herewith.
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 6 of 26
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`claim in this case. (See, e.g., Ex. 2, ¶ 2 (listing asserted claims); Ex. 3 at cls. 1, 4, 5, 6, 9, 12.)
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`4.
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`’377 patent claims 4, 5, 6, 9, and 12 are each method claims that depend, directly
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`or indirectly, from claim 1. (Ex. 3 at cls. 4, 5, 6, 9, 12.)
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`5.
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`Philips and Dr. Martin maintain two specific infringement theories regarding
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`claims 1, 4, 5, 6, 9, and 12 of the ’377 patent: (1) Fitbit directly infringes via “divided” or “joint”
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`infringement and (2) Fitbit indirectly infringes by inducing its users’ underlying acts of direct
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`infringement. (Ex. 1 at 159:24-163:2; see also, generally, Ex. 2.)3
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`6.
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`Dr. Martin alleges that the use of a Fitbit wearable in combination with a
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`smartphone running the Fitbit application is required to infringe the claims. (Ex. 2, ¶ 45.) The
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`nine accused Fitbit wearables are the Fitbit Alta HR, Blaze, Charge 2, Charge 3, Inspire HR, Ionic,
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`Versa, Versa 2, and Versa Lite. (Ex. 2, ¶ 45 and Ex. A.)4
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`7.
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`Dr. Martin opines that direct infringement of ’377 patent claim 1 requires all of the
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`following: (1) downloading the Fitbit application onto a smartphone (element 1.a), (2) pairing the
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`accused Fitbit wearable to a smartphone (element 1.b), (3) syncing the accused Fitbit wearable
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`with the Fitbit application while the accused Fitbit wearable is worn by the user during exercise
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`(elements 1.d, 1.e, 1.f, 1.g, 1.h), and (4) displaying the user’s Cardio Fitness Score page (which
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`includes Cardio Fitness Score and Cardio Fitness Level) on the Fitbit application on the user’s
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`smartphone (elements 1.c and 1.i). (Ex. 2, ¶¶ 188; see also Ex. 1 at 149:13-150:1.)
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`8.
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`According to Philips and its purported economic expert, Dr. Akemann, damages
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`accrued from August 29, 2016 through January 16, 2021. (Ex. 6, ¶ 58; Ex. 7 at 86:12-87:5, see
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`also Ex. 2, ¶ 134 n.5 (Dr. Martin noting Fitbit launched Cardio Fitness feature by August 29,
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`
`3 Philips agreed to withdraw its allegations of contributory infringement on March 1, 2022.
`4 Dr. Martin refers to the nine accused Fitbit wearables as “the ’377 Devices” (see Ex. 2, ¶ 45 and
`Ex. A) and refers to the Fitbit application as “the Fitbit App” (see, e.g., Ex. 2, ¶¶ 50-56).
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`2
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 7 of 26
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`2016).)5
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`9.
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`There are
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` by which all of the accused Fitbit wearables sync
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`their
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`. (Ex. 5 at 89:4-95:25
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`(discussing Fitbit_19-11586_00058796); Ex. 18 (Fitbit_19-11586_00058796), see also Ex. 1 at
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`190:24-191:4; Ex. 2, ¶¶ 89-124.)
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`10.
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`There are four
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` that must be met in order for a sync to
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`occur by any of these
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`—
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`(Ex. 5 at 45:3-46:15; see also Ex. 1 at 184:24-185:12; Ex. 2, ¶ 90.)
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`11.
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`A
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`.
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`. (Ex. 5 at 91:20-24, 93:18-19; Ex. 18 at
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`798; see also Ex. 1 at 191:5-192:1; Ex. 2, ¶¶ 92-93.)
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`12.
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`A
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` occurs when the user clicks the “Sync Now” button within the Fitbit
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`application or pulls down on the screen in the “Today” tab of the Fitbit application. (Ex. 18 at
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`798; Ex. 19 at 618 (“How do I sync my device with the Fitbit app?”); see also Ex. 1 at 192:2-7;
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`Ex. 2, ¶ 95-99.)
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`13.
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`A
`
` (also known as
`
`), occurs
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`. (Ex. 5 at 45:15-46:15, 47:2-15; Ex. 18 at 802; see also Ex. 1 at
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`194:22-195:1; Ex. 2, ¶ 100-102.)
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`14.
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`Through at least March of 2020 for Android users and July of 2020 for iOS users,
`
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`5 The parties dispute whether the ’377 patent expired on January 18, 2020 or January 16, 2021.
`Fitbit maintains that the ’377 patent expired on January 18, 2020, but for purposes of the present
`motion, Fitbit will address the entire period claimed by Philips through January 16, 2021.
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`3
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`Fitbit’s users had the option to turn off the background sync function. (Ex. 1 at 198:3-199:15; Ex.
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`2, ¶ 104.)
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`15.
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`“Cardio Fitness Score” and “Cardio Fitness Level” are the only accused “calculated
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`response[s]” under element 1.h. (Ex. 2, ¶ 134; see also Ex. 1 at 127:21-128:18, 200:20-201:3.)
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`16.
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`Fitbit’s users can open the Fitbit application without viewing their Cardio Fitness
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`Score or Cardio Fitness Level. A user’s Cardio Fitness Score and Cardio Fitness Level are not
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`displayed on the homepage in the Fitbit application. Rather, in order to access the Cardio Fitness
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`Score page that displays both Cardio Fitness Score and Cardio Fitness Level, the user must
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`complete four steps: (1) open the Fitbit application, (2) tap the “Today” tab on the home page, (3)
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`tap the heart rate tile on the “Today” tab, and (4) swipe to the right on the graph. (See, e.g., Ex.
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`11 at 16597 (“How do I track my cardio fitness?”); see also Ex. 1 at 237:18-238:19; Ex. 2, ¶¶ 169;
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`Ex. 10, ¶ 304.)
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`17.
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`Fitbit’s users can view their Cardio Fitness Score and Cardio Fitness Level in the
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`Fitbit application on an iPad or Android tablet using all eight Fitbit wearables. (Ex. 4, ¶ 21; see
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`also Ex. 10, ¶¶ 161, 163.)
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`18.
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`Fitbit’s users can view their Cardio Fitness Score and Cardio Fitness Level in the
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`Fitbit application on a Windows 10 PC using seven of the eight Fitbit wearables—the Alta HR,
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`Blaze, Charge 3, Inspire HR, Ionic, Versa, and Versa Lite. (Ex. 4, ¶ 22; see also Ex. 10, ¶¶ 162,
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`163.)
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`19.
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`Fitbit’s users can view their Cardio Fitness Score and Cardio Fitness Level on the
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`face of the Ionic, Versa, Versa Lite, and Versa 2. (Ex. 1 at 240:11-18; Ex. 10, ¶ 164.)
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`20.
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`Fitbit instructs its users that they may use the eight Fitbit wearables with the Fitbit
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`application on either a smartphone, tablet, and/or Windows 10 PC. (See, e.g., Ex. 20 at 299 (stating
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`4
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 9 of 26
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`that Alta HR users may use Fitbit application on a smartphone, tablet, or Windows 10 PC); Ex. 21
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`at 463 (same Re: Blaze); Ex. 36 at 551-3 (same Re: Charge 3); Ex. 22 at 783-4 (same Re: Inspire
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`HR); Ex. 23 at 157 (same Re: Ionic); Ex. 24 at 1110-2 (same Re: Versa); Ex. 26 at 1045-7 (same
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`Re: Versa Lite); Ex. 25 at 966-7 (stating that Versa 2 users may use Fitbit application on a
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`smartphone or tablet).)
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`21.
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`Viewing a Cardio Fitness Score or Cardio Fitness Level on a tablet, PC, or the face
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`of a Fitbit wearable does not infringe the ’377 patent. (Ex. 1 at 238:20-241:24, 249:18-250:3.)
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`III. LEGAL STANDARD FOR SUMMARY JUDGMENT
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`“The court shall grant summary judgment if the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
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`Civ. P. 56(a). The movant can succeed by citing to affirmative evidence or by showing that the
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`non-movant cannot establish a genuine dispute. Fed. R. Civ. P. 56(c). When the party seeking
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`summary judgment demonstrates the absence of a genuine dispute over any material fact, the
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`burden shifts to the non-movant to show that there is a genuine factual issue for trial. Celotex
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`Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
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`“Summary judgment of noninfringement is appropriate where the patent owner’s proof is
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`deficient in meeting an essential part of the legal standard for infringement, since such failure will
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`render all other facts immaterial.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316,
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`1323 (Fed. Cir. 2001). Conclusory expert testimony and attorney argument cannot establish a
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`genuine issue of fact. See, e.g., Traxcell Techs., LLC v. Sprint Commc’ns Co. LP, 15 F.4th 1121,
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`1130-32 (Fed. Cir. 2021); Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1046 (Fed.
`
`Cir. 2000). The patentee carries the ultimate burden of persuasion to show infringement by a
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`preponderance of the evidence. Medtronic, Inc. v. Mirowski Fam. Ventures, LLC, 571 U.S. 191,
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`203 (2014). Summary judgment of noninfringement should be entered where no reasonable jury
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`5
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 10 of 26
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`could find that the patent owner (here Philips) has met that burden. See Anderson v. Liberty Lobby,
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`Inc., 477 U.S. 242, 254 (1986) (“[I]n ruling on a motion for summary judgment, the judge must
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`view the evidence presented through the prism of the substantive evidentiary burden.”).
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`IV.
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`FITBIT IS ENTITLED TO SUMMARY JUDGMENT OF NONINFRINGEMENT
`FOR EIGHT ACCUSED DEVICES BASED ON PHILIPS’ FAILURE OF PROOF
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`In order to survive the present motion, Philips must come forth with admissible evidence
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`from which a reasonable juror could conclude that either: (1) at least one specific instance of direct
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`infringement has occurred for each of the eight Fitbit wearables or (2) use of the eight Fitbit
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`wearables necessarily infringes. Regarding the first option, Dr. Martin alleges that four steps,
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`performed in order, constitute direct infringement. Philips has no evidence of anyone ever
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`performing those four steps in order with any of the eight Fitbit wearables. Regarding the second
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`option, Dr. Martin admits that the eight Fitbit wearables may be used without infringing.
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`A.
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`Relevant Legal Standards Regarding Proof Of Direct Infringement
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`“[T]o prove direct infringement, a patentee must either point to specific instances of direct
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`infringement or show that the accused device necessarily infringes….” ACCO Brands, Inc. v. ABA
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`Locks Mfr. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007) (citing Dynacore Holdings Corp. v. U.S.
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`Philips Corp., 363 F.3d 1263, 1275-76 (Fed. Cir. 2004)). “[I]t is not enough to simply show that
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`a product is capable of infringement; the patent owner must show evidence of specific instances
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`of direct infringement.” Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1329 (Fed. Cir. 2010) (citing
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`Intel Corp. v. ITC, 946 F.2d 821, 832 (Fed. Cir. 1991); ACCO Brands, 501 F.3d at 1313).
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`B.
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`On-Point Federal Circuit Cases Support The Present Motion
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`’377 patent claim 1 is the only remaining asserted independent claim, and all of the other
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`remaining asserted claims depend from claim 1. (Statement of Undisputed Material Facts
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`(“SUF”), ¶¶ 1-4.) Philips and Dr. Martin argue that, in order infringe claim 1, a Fitbit user must
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`6
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 11 of 26
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`perform the following four steps: (1) download the Fitbit application onto a smartphone (element
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`1.a), (2) pair the accused Fitbit wearable to the smartphone (element 1.b), (3) sync the accused
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`Fitbit wearable with the Fitbit application while the accused Fitbit wearable is worn by the user
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`during exercise (elements 1.d, 1.e, 1.f, 1.g, 1.h), and (4) display the user’s Cardio Fitness Score
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`page (which includes Cardio Fitness Score and Cardio Fitness Level) on the Fitbit application on
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`the user’s smartphone (elements 1.c and 1.i). (SUF, ¶ 7.) The language of the claim requires
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`performing these steps in order. See, e.g., E-Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1222
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`(Fed. Cir. 2007) (“because the language of most of the steps of its method claim refer to the
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`completed results of the prior step, E-Pass must show that all of those steps were performed in
`
`order”) (citing Mantech Env’l Corp. v. Hudson Env’l Servs., Inc., 152 F.3d 1368, 1376 (Fed. Cir.
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`1998) (“the sequential nature of the claim steps is apparent from the plain meaning of the claim
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`language and nothing in the written description suggests otherwise”)).
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`For example, claim element 1.a (step 1) requires downloading an application to a web-
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`enabled wireless phone, while claim elements 1.d, 1.e, and 1.i (steps 3 and 4) require “using the
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`application” on the phone. (Ex. 3 at cl. 1; see also Ex. 1 at 119:24-121:4 (Dr. Martin confirming
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`that, in claim elements 1.d, 1.e, and 1.i, the phone is using the application).) Further, claim
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`elements 1.d, 1.e, and 1.f (step 3) require receiving data and then sending it to an internet server,
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`while claim element 1.h (also step 3) requires the same server to make a calculation based on the
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`data it received in elements 1.d, 1.e, and 1.f. (Ex. 3 at cl. 1.) Finally, claim element 1.h (step 3)
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`requires calculating a “calculated response,” while claim element 1.i (step 4) requires “displaying
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`the response” that was calculated in element 1.h. (Ex. 3 at cl. 1.)
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`In situations like this case, where a patentee presents no evidence of any user ever using
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`the accused product to perform the allegedly infringing method steps in the required order, the
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`7
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 12 of 26
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`accused infringer is entitled to a finding of noninfringement, including on summary judgment.
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`E-Pass: In E-Pass, the district court granted summary judgment of noninfringement based
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`on insufficient evidence that defendants or their customers had practiced all the steps of the
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`claimed method. 473 F.3d at 1217. “The district court held, simply, that ‘E-Pass has submitted
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`no evidence that the patented method has ever been practiced on any Palm VII device. The same
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`circumstance is true as to the Tungsten, Zire and Treo devices -- there is no evidence that the
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`patented method has ever been practiced on any of these devices.’” Id. at 1221 (emphasis original).
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`The Federal Circuit affirmed. Id. at 1223.
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`The Federal Circuit explained that “E-Pass’s difficulty is twofold. Procedurally, it is
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`hornbook law that to survive the defendants’ motions for summary judgment, E-Pass must make
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`a showing sufficient to establish the existence of [each] element essential to its case. Substantively,
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`because the language of most of the steps of its method claim refer to the completed results of the
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`prior step, E-Pass must show that all of those steps were performed in order.” Id. at 1222 (internal
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`citations and quotation marks omitted). The evidence adduced by E-Pass did not show that the
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`accused method steps were performed in order; instead “the evidence here shows, at best, that the
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`Palm defendants taught their customers each step of the claimed method in isolation. Nowhere do
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`the manual excerpts teach all of the steps of the claimed method together, much less in the required
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`order. Accordingly, it requires too speculative a leap to conclude that any customer actually
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`performed the claimed method.” Id. Further, “the very same record evidence upon which E-Pass
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`attempts to rely also shows that the accused PDAs are general-purpose computing devices that can
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`be used for a variety of purposes and in a variety of ways.” Id.
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`The evidence presented by Philips here does not even go that far. At most, as described
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`below, the evidence presented by Philips with respect to the eight Fitbit wearables suggests that
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`8
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 13 of 26
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`those products may have been used to perform some, but not all, of Dr. Martin’s steps 1-4. Similar
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`to E-Pass, Philips’s evidence does nothing to show that anyone performed steps 1-4 in the required
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`order. And finally, as in E-Pass, the eight Fitbit wearables here undisputedly have noninfringing
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`uses (SUF, ¶¶ 15-21) and the evidence relied on by Philips instructs Fitbit’s users how to employ
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`those noninfringing alternatives (SUF, ¶ 20 (describing use of tablets and Windows 10 PCs).)
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`ACCO Brands: Similarly, in ACCO Brands, defendants appealed a jury finding of induced
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`infringement. 501 F.3d at 1309. “At trial, the jury was informed that, based on the claim
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`construction of the pin limitation, the [accused] key lock could essentially be operated in two ways,
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`one infringing and the other noninfringing.” Id. at 1310. On appeal, the patentee argued that “the
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`record shows that key lock users will use the lock in an infringing manner at least some of the time
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`because that configuration is the most natural and intuitive way to use the lock.” Id. at 1312. “In
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`support of its assertion that direct infringement was proven, [patentee] points to the expert
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`testimony of Dr. Dornfeld, a set of instructions provided in [accused infringer’s] key lock product
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`that described the infringing method (‘the ABA hang card’), and the jury’s observations of the
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`lock itself. [Patentee] contends that such evidence established that the key lock was capable of
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`being used in an infringing manner, which Dr. Dornfeld testified was the ‘natural and intuitive
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`way to employ the device.’” Id.
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`The Federal Circuit found the patentee’s argument “unpersuasive.” Id. at 1313. The court
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`stated that [i]n order to prove direct infringement, a patentee must either point to specific instances
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`of direct infringement or show that the accused device necessarily infringes the patent in suit.” Id.
`
`First, the court confirmed that “the parties do not dispute that the accused device can be
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`operated in either of two modes--the infringing Dornfeld method or the noninfringing press-to-
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`lock method. Because the accused device can be used at any given time in a noninfringing manner,
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 14 of 26
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`
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`the accused device does not necessarily infringe the ’989 patent.” Id.
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`Second, the court explained that the sole witness who testified to having used the accused
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`product in an infringing manner was the patentee’s expert. Id. That, combined with the fact that
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`the accused infringer provided users with instructions for using the accused product in the
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`noninfringing manner, confirmed that there was no basis to infer specific instances of direct
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`infringement. Id. That lack of evidence was buttressed by the fact that the patentee’s expert was
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`not aware of any user other than himself who had used the infringing method. Id.
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`The exact same facts exist here. The evidence relied on by Philips merely suggests that
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`the eight Fitbit wearables are capable of being used to view a Cardio Fitness Score and Cardio
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`Fitness Level on a smartphone in the accused method, and also confirms that they can be used to
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`view a Cardio Fitness Score and Cardio Fitness Level on a tablet, a Windows 10 PC, and/or the
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`wearable itself in unaccused methods (SUF, ¶¶ 17-21.) Further, as in ACCO Brands, Fitbit
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`instructs its users that they may use the eight Fitbit wearables in these noninfringing manners. (See
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`SUF, ¶ 20.) Finally, as explained below, there is no evidence of anyone other than Dr. Martin
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`actually using the eight Fitbit wearables in the accused method. In fact, similar to ACCO Brands,
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`here, Dr. Martin is not aware of anyone other than himself who has used the infringing method:
`
`Q. …In the opinions that you’ve offered to date in this case, you
`have not opined regarding what proportion of Fitbit-accused device
`owners in the United States have used the Fitbit App on a mobile
`phone to display their Cardio Fitness Score or Cardio Fitness Level.
`True?
`
`MR. CUSTER: Same objection.
`
`No, I haven’t given a figure on how many have actually used
`A.
`it. But I would point out that in the report, I lay out the ways in
`which Fitbit encourages people to use it.
`
`(Ex. 1 at 248:19-250:7.)
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 15 of 26
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`C.
`
`Argument
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`Philips and Dr. Martin do not cite a single piece of evidence that shows that anyone has
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`ever used the eight Fitbit wearables in an allegedly infringing way. And Dr. Martin admits that
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`the eight Fitbit wearables can be used in noninfringing ways and thus, do not necessarily infringe.
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`Fitbit, therefore, requests summary judgment of noninfringement for the eight Fitbit wearables.
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`Dr. Martin’s expert report on infringement contains a section called “Fitbit’s Customers
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`Practice the Claimed Invention,” wherein Dr. Martin purports to present evidence of Fitbit users
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`performing the aforementioned four steps. (See Ex. 2, ¶¶ 238-258.) This is the only portion of Dr.
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`Martin’s report that purportedly presents evidence of anyone actually practicing the steps 1-4 that
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`Dr. Martin himself opines are required to perform the method of claim 1. (See generally Ex. 2.)6
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`The problem is that Dr. Martin presents no evidence that any one user of any of the eight
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`Fitbit wearables has ever performed those four steps in the required order, or that users of those
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`eight Fitbit wearables necessarily perform those four steps in the required order. (See Ex. 1 at
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`249:18-250:3 (admitting that Fitbit users are not required to practice claim 1); Ex. 2, ¶¶ 238-258
`
`(no evidence of any user performing Dr. Martin’s steps 1-4 in order).) Thus, Fitbit is entitled to
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`summary judgment of noninfringement for the eight Fitbit wearables. See, e.g., Fujitsu, 620 F.3d
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`at 1329-30 (affirming summary judgment of noninfringement where (1) the accused product
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`worked in multiple modes, only one of which infringed and (2) the evidence only showed that the
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`products were capable of infringing, but did not show actual infringement); E-Pass, 473 F.3d at
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`1213, 1222-23 (affirming summary judgment of noninfringement: “[T]he evidence here shows, at
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`best, that the [] defendants taught their customers each step of the claimed method in isolation.
`
`
`6 During the meet and confer, Philips also pointed to the section of Dr. Martin’s report titled “Fitbit
`Actively Encourages the Practice of the ’377 Patent” (Ex. 2, ¶¶ 190-237) as potentially providing
`evidence of Fitbit’s users practicing the accused method. But that section only purports to show
`what Fitbit instructs its users—it does not contain any evidence of what the users actually do.
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 16 of 26
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`Nowhere do the manual excerpts teach all of the steps of the claimed method together, much less
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`in the required order. Accordingly, it requires too speculative a leap to conclude that any customer
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`actually performed the claimed method.”).
`
`1.
`
`Philips Has No Evidence Of Any Fitbit User Performing Dr. Martin’s
`Step 3 With The Eight Fitbit Wearables, And The Eight Fitbit
`Wearables Do Not Necessarily Perform Step 3
`
`Dr. Martin’s alleged evidence that users perform his step 3—syncing the accused Fitbit
`
`wearable with the Fitbit application while the accused Fitbit wearable is worn by the user during
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`exercise—is disclosed in paragraphs 244-248 of his expert report on infringement.
`
`a.
`
`Philips Has No Evidence Of Any Fitbit User Performing Dr.
`Martin’s Step 3 With The Eight Fitbit Wearables
`
`Dr. Martin’s only alleged evidence of a user performing his step 3 pertains to the Charge
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`2, which is not the subject of this motion. (Ex. 2, ¶¶ 244-248.) Thus, Dr. Martin has no evidence
`
`of any Fitbit user performing his step 3 with any of the eight Fitbit wearables.
`
`b.
`
`The Eight Fitbit Wearables Do Not Necessarily Perform Dr.
`Martin’s Step 3
`
`Dr. Martin admits that the eight Fitbit wearables do not necessarily practice step 3.
`
`There are
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` by which all of the accused Fitbit wearables sync their
`
`data—
`
`. (SUF, ¶ 9.)
`
`Most importantly, there are four
`
` that must be met in order for a
`
`sync to occur by any of these
`
`—
`
`
`
`
`
`
`
`. (SUF, ¶ 10.) Based on these
`
` alone, the eight Fitbit wearables do
`
`not necessarily practice Dr. Martin’s step 3, because Fitbit does not require a user to
`
`
`
` in order to use their Fitbit wearable during exercise. (See, e.g., Ex. 1 at
`
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`Case 1:19-cv-11586-FDS Document 332 Filed 03/02/22 Page 17 of 26
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`
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`186:9-188:10, 189:19-190:22.) Even when the
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` are met, the eight Fitbit
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`wearables do not necessarily practice Dr. Martin’s step 3, because Fitbit does not require the eight
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`Fitbit wearables to sync while the user is exercising.
`
`A
`
`
`
`. (SUF, ¶ 11.) A
`
` occurs when
`
`the user clicks the “Sync Now” button within the Fitbit application or pulls down on the screen in
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`the “Today” tab of the Fitbit application. (SUF, ¶ 12.) Thus, both
`
`
`
`require a user to actively open and/or engage with the Fitbit application on their mobile phone.
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`(Ex. 1 at 192:8-14.) Therefore, even if the
`
` are met, a
`
`
`
` still does not necessarily occur while the user is exercising. For example, Fitbit users
`
`are not required to exercise at all. And even if they do, Fitbit users are not required to open or
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`engage with the Fitbit application on their mobile phone while exercising. In fact, Dr. Martin
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`admitted at his deposition that they often do not, and with good reason:
`
`Can you think of any reas