Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 1 of 17
`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`PHILIPS NORTH AMERICA LLC,
`
`Plaintiff,
`
`Vv.
`
`FITBIT LLC,
`
`Defendant.
`
`
`
`Civil Action No. 1:19-cv-11586-FDS
`
`FITBIT’S REPLY IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT OF
`NONINFRINGEMENTOF U.S. PATENT NO. 8,277,377 (DKT. 329
`
`

`

`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 2 of 17
`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 2 of 17
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`TABLE OF CONTENTS
`
`Pages
`
`INTRODUCTION.u0. occ cceceeceecsececsecsecsecaecaecaecaecaecsecsecaecececeeseeceaceaceaceaeeaetaeeseeseeeeaesass |
`
`Il.
`
`THE ACCUSED FITBIT SYSTEM DOES NOT IMPLEMENT THE “SERVER”
`REQUIRED BY CLAIM ELEMENTS1.G AND L.Hon... cc cecesseseeseeseeceeceecersersenssesseseeserees l
`
`A.
`
`B.
`
`Fitbit’s Declaration Is Not Contradicted By Its Prior 30(b)(6) Testimony.............. 2
`
`Philips’ New Legal Theory Should Be Stricken, And Does Not Overcome
`Fitbit’s Request For Summary Judgment EvenIf It Is Considered...............e eee 5
`
`IIL.
`
`FITBIT’S CALCULATION OF RESTING HEART RATE CARDIO FITNESS
`SCORE IS NOT “BASED ON” ANY “EXERCISE-RELATED
`INFORMATION” o.oo oco ccc cceceeccescesce cee ceeceecaecaesevseesceseaceceesae ca saseracsecseeteearcarseeserateeceeeeters 10
`
`IV.
`
`CONCLUSION Wu... cececeeceeceeceeteeseesesesseeceeceecaessesaesassssseeceecsecaecaesaesassesseeseesecaecaeeaseasenseess 12
`
`

`

`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 3 of 17
`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 3 of 17
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`TABLE OF AUTHORITIES
`
`Pages
`
`Cases
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338, 1342 (Fed Cir. 2008)... ese ceeceecensesseeseecseceeceesesseeeaecaeceaseseenseseaecaeeeeeenaenes 7
`
`Enfish, LLC vy. Microsoft Corp.,
`822 F.3d 1327, 1341-43 (Fed. Cir. 2016) oe. ec ceeceeseecsecesseecsecseseececeaeeeaecenaeeeaeceneeneaseeees 9
`
`FotoMedia Technologies, LLC v. AOL, LLC,
`2009 U.S. Dist. LEXIS, *21 (E.D. Tex. Jul. 21, 2009)... eececeeseceecensetsetsereaseneeeneees 8,9
`
`TAP Intermodal, L.L.C. v. Nw. Airlines Corp.,
`No. CIV.A. 2:04-CV-65, 2005 WL 6217423 (E.D. Tex. Sept. 7, 2005)...eee 12
`
`MemoryIntegrity, LLC v. Intel Corp.,
`2016 U.S. Dist. LEXIS 36806, *28-45 (D. Or. Mar. 22, 2016) .....cccccccceeseesseeseceeceeeeeseeeeees 8
`
`Motorola Mobility LLCvy. Int'l Trade Comm'n,
`553 F. App'x 971 (Bed. Cir, 2014) woe ccecseseecensensenseesaececensesseeseecaecaeceaeesaeesaseaseaeseneenaenes 7
`
`TiVo, Inc. v. Echostar Commc ‘ns Corp.,
`516 F.3d 1290 (Fed. Cir. 2008)... eeccecesesseeseeceeseeceeceaeecaecenseecaeceneeeaeceesenaeceeeeeeeceeenes 9
`
`Rules
`
`Fed. R. Civ. P. S6(C)(1) oo. ceccccceeceecseseesesceesenseesaecaecsesessesseesaecaessecessenseesaecaeceecessenseecaecaeseseesaeseeeaes 2,3
`
`ii
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`

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`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 4 of 17
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`I.
`
`INTRODUCTION
`
`Philips’ Opposition (Dkt. 362) does not raise any material factual dispute with Fitbit’s
`
`showingthat there is no single server or serverarray in the entire Fitbit system that is involved in
`
`all three steps of elements 1.g and 1.h:
`
`(1) sending the “exercise-related information” to an
`
`internet Servervia a Wireless network,(2) receiving a calculated response from the server, and (3)
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`the [calculated] response associated with a calculation performed by the server based on the
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`exercise-related information.
`
`Instead, Philips resorts to unfounded attacks on Fitbit’s 30(b)(6)
`
`witness and declarant, and again changes its infringement argument to go even further beyond
`
`anything that was identified or disclosedin fact discovery orby its expert.
`
`In short, Philips refuses
`
`to accept that the single server system described and claimed in the now-expired °377 patent in
`
`2000 (and its provisional
`
`in
`
`1999) are fundamentally different
`
`than the complex and
`
`technologically advanced system used by market-leader Fitbit twenty yearslater.
`
`Additionally, Philips does not dispute any material fact with respect to Fitbit not calculating
`
`its Resting Heart Rate Cardio Fitness Score based on any exercise-related information. Philips
`
`merely repeats an argument addressed in Fitbit’s opening brief, asserting that when the accused
`
`Fh systea
`then calculates resting heart rate usingee
`|| that calculation is somehow “based on [] exercise-related information” under element 1.h.
`
`Philips’ arguments are meritless. Summary judgmentof noninfringementis appropriate.
`
`Il.
`
`THE ACCUSED FITBIT SYSTEM DOES NOT IMPLEMENT THE “SERVER”
`REQUIRED BY CLAIM ELEMENTS 1.G AND 1.H
`
`Fitbit’s undisputed evidence conclusively establishes that thep| to which
`exercise-related information is allegedly sent in element |.g5 fe
`
`whichthe alleged calculated response is received under element I.h.
`
`(Dkt. 330, SUF 4§ 21-31.)
`
`

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`Philips’ expert, Dr. Martin, admitted that he has no infringement opinion based on the
`
`interpretation that elements |.g. and |.h. use different arrays of servers.
`
`(Dkt. 330, SUF 4 19
`
`(quoting Dkt. 338-1 at 145:2-9).) Thus, Philips has no evidence, expert or otherwise, that the
`
`actual operation ofthe accused Fitbit system infringes the asserted claims.
`
`Philips does not present any contrary evidence to overcome this clear case of
`
`noninfringement.
`
`Instead, Philips resorts to unsupported attacks on Fitbit’s 30(b)(6) witness and
`
`moves the goalposts by inserting yet another brand newlegal theory that was never previously
`
`disclosed. Philips does not raise a material dispute of fact, and summary judgmentis appropriate.
`
`A.
`
`Fitbit’s Declaration Is Not Contradicted ByIts Prior 30(b)(6) Testimony
`
`Under Rule 56, Philips was required to dispute Fitbit’s factual statements by either
`
`particularly citing to materials in the record that establish a genuine dispute or showingthat the
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`materials cited by Fitbit do not establish the absence of a genuine dispute. Fed. R. Civ. P. 56(c)(1).
`
`Philips’ Opposition does neither, yet Philips purports to dispute Fitbit’s SUF 4] 18-19 and 21-31.
`
`Fitbit’s SUF § 18 quoted Dr. Martin’s report stating that claim 1 requires the same server
`
`or server array to perform elements 1.g and 1.h. (Dkt. 330, SUF § 18.) Philips’ only responseis
`
`to claim that Dr. Martin did not admit that these elements “require[] a single server.” (Dkt. 362 at
`
`2.) But that response does not address Fitbit’s statement of fact, which accounted for Dr. Martin’s
`
`(faulty) opinion that a single server array can satisfy those elements. Thus, Philips did not
`
`genuinely dispute Fitbit’s SUF § 18. Similar, Fitbit’s SUF § 19 is a direct quote from Dr. Martin’s
`
`deposition, and Philips does not dispute that the quote is accurate. (Dkt. 330, SUF ¥ 19; Dkt. 362
`
`at 2.) Thus, Fitbit’s SUF {| 18-19 conclusively establish undisputedfacts.
`
`With respect to Fitbit’s SUF §] 21-31, Philips uses similar misdirection in order to claim
`
`that there is a material dispute of fact without presenting any contrary facts in the record or
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`undermining the veracity of Fitbit’s evidence.
`
`(See Dkt. 362 at 2.) Philips never genuinely
`
`2
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`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 6 of 17
`a
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`disputes these facts, so they are conclusively established. Instead, Philips first claims that Fitbit’s
`theory that the accused Fitbit system doesnotinfringe becauseit usesPo
`GE© performthe acts accused of meeting elements 1.g and 1.h was disclosed “for the
`
`first time in Dr. Paradiso’s report.” (Dkt. 362 at 3.) But then, Philips admits that Fitbit disclosed
`
`this theory in an interrogatory response during fact discovery. (Dkt. 362 at 4-5 (quoting Dkt. 366-
`
`6 at 75).) Philips then claims that Fitbit did not “develop” this theory during discovery, but Philips
`
`does not point to any discovery request seeking details about the back-end server architecture of
`
`the Fitbit system. (/d. at 4.) That is because Philips never sought such discovery, which is apparent
`
`in Philips’ attempts to undermine Fitbit’s supporting evidence.
`
`In particular, Fitbit supported its summary judgment request with a declaration from its
`
`30(b)(6) deposition witness, Mr. Gilles Boccon-Gibod,
`
`that described the back-end server
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`architecture of the Fitbit system in detail.
`
`(See Dkt. 338-4, 4] 12-19.) Philips claims that “Mr.
`
`Boccon-Gibod’s declaration doesnot itself provide anyevidence for the statements therein.” (Dkt.
`
`362 at 4.) But the declaration and the statements therein, provided under penalty of perjury, are
`
`evidence. See Fed. R. Civ. P. 56(c)(1)(A) (party can support factual statements via “affidavits or
`
`declarations”). Likely realizing this, Philips turns to unsupported accusations that Mr. Boccon-
`
`Gibod’s declaration contradicts his deposition testimony. Butthis too is incorrect.
`
`For example, Philips claims that Mr. Boccon-Gibod neverdistinguished between different
`
`BE bis deposition.
`
`(Dkt. 362 at 5 (citing, inter alia, Dkt. 366-7 at 19:24-21:25).)
`
`But Philips never asked.
`
`In fact, Mr. Boccon-Gibod explained the complexity of the back-end
`
`serverarchitecture to Philips’ questioning attorney at the very start of his deposition:
`
`Q. When you say back-end servers, can you explain what you meanbythat?
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`

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`
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`(Dkt. 366-7 at 20:6-19.) Mr. Boccon-Gibod also promptly confirmedthat thepo
`Po is run within this complex architecture.
`(/d. at 21:9-19.) Despite Mr.
`
`Boccon-Gibod’s early description of the complex architecture of the accused system, Philips never
`
`asked him for any relevant details about which specific server(s) performed any relevant
`
`function(s) in the testimony that Philips string-cites.
`
`(See Dkt. 362 at 5 (string-citing Dkt. 366-7
`
`at 19:24-21:25, 40:8-43:21, 51:18-52:5, 58:4-15, 65:16-69:3, 72:6-73:5, 104:11-108:13, 112:15-
`
`113:19, 117:8-120:10, 130:14-132:16).) Philips then quotes two portions of Mr. Boccon-Gibod’s
`
`testimony that merely confirm that Philips failed to ask him for relevant details.
`
`First, Philips quotes Mr. Boccon-Gibod’s testimony thatpe
`a: the device data is sent to the server. (Dkt. 362 at 5-6 (quoting Dkt. 366-7 at
`
`51:18-52:5).) That testimony is true, and conforms with Mr. Boccon-Gibod’s declaration, which
`
`states that the[i (Dit. 338-4, 9 12.) In fact,
`
`in earlier testimony string-cited by Philips, Mr. Boccon-Gibod had also stated that syncing data to
`
`the back end means sending that data to “one of the Fitbit servers.” (Dkt. 366-7 at 40:8-25; see
`
`also id. at 117:8-118:17 (string-cited by Philips; explaining that during sync process,nn
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`early description of the complex back-end architecture, Philips never asked Mr. Boccon-Gibod the
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`key question— Which back-end server(s) receives synced data?
`Second, Philips quotes Mr. Boccon-Gibod’s testimony thatae
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`retrieved from a back-end server. (Dkt. 362 at 6 (quoting Dkt. 366-7 at 66:7-17).) That testimony
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`is also true, and also conforms with Mr. Boccon-Gibod’s declaration, whichstates that the back-
`
`

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`an API call from the Fitbit app.
`(Dkt. 338-4, {§| 14-19.)
`In fact, in earlier testimony string-cited
`by Philips, Mr. Boccon-Gibodhad also stated holl
`Po (Dkt. 366-7 at 41:14-21.) Again, despite his early
`description of the complex back-end architecture, Philips never asked Mr. Boccon-Gibod the key
`
`Mr. Boccon-Gibod did not withhold any relevant details during his deposition. He simply
`
`answered the questions Philips asked him, and his answers do not contradict or cast doubt on the
`
`information in his declaration.* Thus,Fitbit’s SUF §§ 21-31 also establish undisputedfacts.
`
`There is no dispute of material fact that Fitbit usesPo to perform
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`the functions accusedofpracticing elements |.g and 1.h. Because (1) elements 1.g and |.h require
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`a single server (or array of servers under Philip’s and Dr. Martin’s theory) and (2) Philips and Dr.
`Martin have not presented an infringement theory based on elements 1|.g and 1.h using P|
`a <- Dkt. 330, SUF § 19), summaryjudgmentof noninfringementis appropriate.*
`
`B.
`
`Philips’ New Legal Theory Should Be Stricken, And Does Not Overcome
`Fitbit’s Request For Summary Judgment EvenIf It Is Considered
`
`Recognizing the absence of a material dispute offact, Philips attempts to insert yet another
`
`newinfringementtheoryinto the case, just as it did in its own motion for summaryjudgment(see
`
`Dkt. 364 at 3-4 (describing new theory disclosed in Philips’ memorandumin support of its motion
`
`' Philips’ failure to question Mr. Boccon-Gibodin detail wasnot for lack of time. His deposition
`ended after about 4 hours. (See Dkt. 366-7.) In fact, Philips did not walk anyFitbit witness through
`the entire claim | to establish evidence of alleged infringement.
`(See, e.g., Dkt. 332 at 11-20.)
`Philips was either lying behind the proverbial log by intentionally limiting their examination, or
`else they only nowrecognize their lack of diligence andare trying to profit by blaming Fitbit for
`not volunteering information during discoverythat Philips never requested.
`? Philips’ complaint that Kyle Smith wasnot included in Fitbit’s prior Rule 26(a) disclosures (Dkt.
`362 at 4) is irrelevant—Mr. Boccon-Gibod wasa prepared and knowledgeable 30(b)(6) witness.
`> To be clear, Fitbit maintains that the claims require a single server. (See Dkt. 275, 276.)
`
`5
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`

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`for summary judgment; Dkt. 340)) and in its oppositions to Fitbit’s other motions for summary
`
`judgment. Specifically, Dr. Martin previously argued that elements |.g and |.h need not be
`
`performedby a single server, as long as they are performed by the sameserverarray.
`(Dkt. 338-
`1 at 142:15-145:9; Dkt. 338-9,
`290.) Philips nowrealizes that is notPo
`P| (See Dkt. 330 at 12-15.) Thus, while Dr. Martin admitted that he “[has not] offered
`an infringement opinion based onthe interpretation that elements 1.g. and 1.h. can use different
`
`arrays of servers” (Dkt. 330, SUF §] 19 (quoting Dkt. 338-1 at 145:2-9) and Philips does not point
`
`to the disclosure of any such theory in contentions, Philips nowargues that “‘an internet server”
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`and “the server” claimed in elements |.g and 1.h can encompass an unbounded numberof different
`
`servers in different arrays, regardless of how they are architected and regardless of whether
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`different arrays of servers perform the different functions specified in elements |.g and 1.h. (Dkt.
`
`362 at 7-10.) Summary judgmentis not the time for newtheories, and this argument should be
`
`disregarded. Pernix Ir. Pain DAC v. Alvogen Malta Operations, Ltd., No. 16-139-WCB, 2018 WL
`
`2225113, 2018 U.S. Dist. LEXIS 81419, at *12-22 (D. Del. May 15, 2018) (Bryson, J., by
`
`designation)
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`(refusing to allow party to oppose summary judgment based on previously
`
`undisclosed theory); see also Abiomed v. Maquet Cardiovascular, 2021 WL 4477432, *8 (D.
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`Mass. Sept. 30, 2021) (Saylor, J.) (refusing to consider motion for summary judgment based on
`
`same). Evenifit is considered, Philips’ new argumentis incorrect in the context of ’377 patent
`
`claim | and the disclosure of the alleged inventions in the intrinsic record, and raises even more
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`newquestions regarding claim construction and the inadequacy of the § 112 support for claim1.
`
`Philips correctly notes the general rule that “an indefinite article ‘a’ or ‘an’ in patent
`
`parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional
`
`phrase ‘comprising’.”” (Dkt. 362 at 7 (quoting Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d
`
`

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`1338, 1342 (Fed Cir. 2008).) However, Philips fails to address the impact of the antecedentbasis
`
`in “the server” in element |.h, which requires the same server (or server array under Philips’
`
`original theory) to perform all of the functions in elements 1.g and 1.h.
`
`For example, in Motorola Mobility LLC v. ITC, the Federal Circuit considered the meaning
`
`of the claim term “‘a change in accessibility.” 553 F.App’x 971, 972 (Fed. Cir. 2014). The claim
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`languagein question specified “. ..in response to a changein accessibility of an application, update
`
`the application registry; and control the transmitter to communicate the changeto the fixed portion
`
`of the wireless communication system.” /d. at 973. Similar to Philips here, the patentee, Motorola,
`
`argued that “a changein accessibility” and “the change”could besatisfied by two different changes
`
`in accessibility because “a change” could refer to multiple changes based on the general rule that
`
`“a” means “one or more.” /d. at 974-975. However, the Federal Circuit noted that “this general
`
`rule does not apply whenthe context of the use of ‘a’ within the claim clearly demonstratesthat it
`
`is limitedto the singular.” /d. at 975. Most relevant here, the court noted that:
`
`[T]he claim requires that “the change” be communicated to the fixed
`portion of the wireless network. Since the only antecedentbasis forthis
`change derives from the phrase “a change in accessibility,” the change
`that causes an updateto the application registry must be the same change
`that is communicatedto the fixed portion of the wireless network.
`
`Id. Similar here, element 1.h specifies “the server,” which Dr. Martin contends refers back to “an
`
`internet server” in element 1|.g (See Dkt. 330, SUF 4 18; see also Dkt. 338-3, cl. 1), so the same
`
`server(orserverarray in Philips’ argument) mustsatisfy both elements.* The Motorola court also
`
`noted that “the claim uses the term ‘and’ and not ‘or’ to describe what must occur in response to
`
`‘a change in accessibility,’ thereby indicating a conjunctive requirement within the claim.” 553
`
`F.App’x at 975. Similar here, the elements of claim 1 are listed conjunctively. (See Dkt. 338-3,
`
`‘Tn prosecution, the language was amended from “a server” to “the server” (Dkt. 330, SUF 4] 17),
`further confirming thatit specifies an antecedent basis to a server mentioned earlier in the claim.
`
`7
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`

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`cl. 1.) Ultimately, the court disagreed with Motorola’s expansive argument:
`
`[Motorola’s] argumentis not supported by the claim, which requires that
`the registry be updated in responseto “a” changein accessibility and that
`the transmitter communicate “the” change in accessibility,
`i.e.,
`the
`change that resulted in updating the registry. Motorola’s argumentfails
`because Motorola has not identified a single change in accessibility in
`the accused Apple devices that causes both an update to the application
`registry and a communication of the change in accessibility to the fixed
`portion of the wireless network as required by the asserted claim.
`
`553 F.App’x at 975; see also Memory Integrity, LLCvy. Intel Corp., 2016 U.S. Dist. LEXIS 36806,
`
`*28-45 (D. Or. Mar. 22, 2016) (construing “a cache access request” and “the cache access request”
`
`as the same request). Similar here, Philips has not identified a single server (or server array) in
`
`Fitbit’s system that performs all of the functions of “the server” in elements 1.g and 1.h. As Fitbit
`
`explained,
`
`those functions areP| and
`
`therefore, summary judgmentis appropriate. (See Dkt. 330 at 7-12; see also Dkt. 364 at 3-5.)
`
`Further, even without considering the antecedent basis for “the server” in element 1.h,
`
`Philips’ categorical argument fails to acknowledge that there are other exceptions to the general
`
`rule that “a” or “‘an” means “one or more.” For example, in FotoMedia Technologies, LLC v. AOL,
`
`LLC,
`
`the court faced the same question presented here—‘whether the claimed systems and
`
`methods may include multiple server computers, and whether steps recited in the claims can be
`
`divided among these server computers”—without the antecedent basis consideration described
`
`above. 2009 U.S. Dist. LEXIS, at *21 (E.D. Tex. Jul. 21, 2009). The court first explained that:
`“eo?
`The Federal Circuit has held that generally, the use of “a” or “an” in
`patent parlance carries the meaning of “one or more” in open-ended
`claims containing the transitional phrase “comprising. However,
`“a” may be properly construed as being singular when a plural
`construction is inconsistent with the claim context and neither the
`specification nor the drawings disclose more than “one”.
`
`Id. (citations omitted). The court wentonto note that the plaintiff pointed out that the specification
`
`disclosed multiple servers, while the defendant argued that the context ofthe claims supported that
`
`8
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`a single server must execute all the steps of the claimed invention. Jd. at 22-23.
`
`In light of those
`
`arguments, the court construed “a server” to mean “one server computer.” Jd. at 24. Notably, the
`
`plaintiff argued that the court should ignore enablementand written description in construing the
`
`term, but the court disagreed, citing Federal Circuit precedent. Jd. at n.3. The Federal Circuit has
`
`similarly and repeatedly construed “a” or “an” terms in “comprising” claims singularly based on
`
`the context of their use. See, e.g., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1341-43 (Fed.
`
`Cir. 2016) (construing “a logical table” singularly); Motorola, 553 F.App’x at 975-76 (construing
`
`“a change in accessibility” singularly); TiVo, Inc. v. Echostar Comme’ns Corp., 516 F.3d 1290,
`
`1303-1305 (Fed. Cir. 2008) (construing “an MPEG stream”to mean “a single stream”).
`
`FotoMedia isinstructive here, becausein order to adopt Philips’ proposed construction that
`
`“an internet server” and “the server” in elements |.g and 1.h can encompass an unbounded number
`
`of servers or server arrays regardless of their architecture,
`
`the Court would need to ignore
`
`enablement and written description issues related to the disclosures in the provisional application,
`
`specification, and file history. Most importantly, the provisional application to which the °377
`
`patent claims priority only describes one single server for performing the entirety of the alleged
`
`invention(s), rather than the type of complex architecture used by Fitbit.
`
`(See Dkt. 338-14
`
`(provisional application; lone drawing and text describing embodiments only disclose one single
`
`“remote webserver’); see also Dkt. 276 at 8-10; Dkt. 338-10, {[§] 230-248 (describing bases for
`
`construing °377 patent claim 1 to encompassa single server); Dkt. 338-15, 4 1021-1031 (same).)
`
`Moreover, because Philips never disclosed this new theory that the claim could be satisfied
`
`by multiple server arrays, Fitbit did not have the opportunity to fully develop all potential defenses
`
`related to the inadequacy of the written description and enablementin the provisional application
`
`and specification, and the indefiniteness of the claims with respect to the numberofservers in
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`claim 1.
`
`(See, e.g., Dkt. 276 (addressing Fitbit’s prejudice from Philips’ failure to disclose prior
`
`theory that claim | encompasses multiple individual servers).) Further, Fitbit did not have the
`
`opportunity to fully develop an argument that Philips is not entitled to claim priority back to the
`
`provisional application based onits failure to disclose multiple-server-array systems, which would
`
`make additional priorart available to invalidate the claims. (/d.) Thus, Fitbit would be prejudiced
`
`if the Court considers Philips’ new argument that elements 1.g and 1.h need not even be performed
`
`by the sameserverarray, and that argumentshould thus be ignored and stricken.
`
`In a last ditch effort to saveits infringementcase, Philips also arguesthat “there is still one
`
`single server that a user’s web-enabled wireless phone sends exercise-related information to and
`
`receives a calculated response from.” (Dkt. 362 at 10.) Notably, in the entire § ILC ofits brief
`
`where this argument is presented, Philips does not cite a single piece of evidence, because the
`
`argument is pure speculation. (See Dkt. 362 at 10-13.) As proven and explainedin Fitbit’s opening
`
`brief and its opposition to Philips’ own summary judgment motion, Philips’ statement
`
`
`
`is
`
`Hi,=FITBIT’?S CALCULATION OF RESTING HEART RATE CARDIO FITNESS
`SCORE IS NOT“BASED ON”ANY “EXERCISE-RELATED INFORMATION”
`
`Everyone agrees that Fitbit calculates RHR Cardio Fitness Score using the formula:
`
`> Fitbit’s argument does not require that the “calculation server’ (Philips’ new term) directly
`receive the exercise-related information in element 1.2 and directly send the calculated response
`in element 1.h.
`
`(See Dkt. 362 at 11.)
`
`

`

`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 14 of 17
`a
`ee
`po (Dkt. 330, SUF, §§] 32-33; Dkt. 362 (Philips did not respond
`
`to Fitbit’s SUF“| 32-33).) Everyone also agrees that Fitbit calculates a user’s RHR Cardio Fitness
`
`Level by comparing the user’s RHR Cardio Fitness Score to those ofothers in the user’s age and
`
`gendercohort.
`
`(Dkt. 330, SUF, 4 14; Dkt. 362 at 1 (Fitbit’s SUF § 14 is undisputed).)°
`
`Philips’ response, instead, focuses on how Fitbit determines the user’s resting heartrate,
`
`arguing that the calculationis “based on” exercise-related information. (Dkt. 362 at 13-16.) While
`
`Philips claims that “‘Fitbit’s motion...fails to describe how the Resting Heart Rate Valueis itself
`
`calculated byFitbit” (Dkt. 362 at 13), Fitbit’s opening brief explained howresting heart rate is
`
`determined. (Dkt. 330 at 18 (explaining that
`
`Philips then resorts to misconstruing this calculation, arguing that “the Resting Heart Rate
`
`Pe (Dkt. 362 at 13 (emphasis added).) But Philips’
`
`
`
`So like I just said and as I laid outin the report,
`
`
`
`® Notably, Philips did not respond to Fitbit’s statements of material fact relating to this ground,
`including SUF 4] 34, whichstates that resting heart rate is not “exercise-related data.” (See Dkt.
`330, SUF §{§ 32-36; Dkt. 362 (Philips did not respond to anyofFitbit’s SUF 4{§| 32-36).)
`
`1]
`
`

`

`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 15 of 17
`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 15 of 17
`
`(Dkt. 338-1 at 205:13-22 (emphasis added).)
`
`In other words, Fitbit
`
`ofresting heart rate.
`
`(Id.; see also Dkt. 330 at 17-18.)’
`
`Philips’ own argument and case cite regarding the meaning of “based on” contradictits
`
`theory. Philips argues that “the plain and ordinary meaning of ‘based on’ shouldincludeall inputs
`
`to the calculation” and characterizes J4P Intermodal, LLC v. Northwest Airlines Corp. as
`
`“construing ‘based on’ to mean ‘taking into consideration’. (Dkt. 362 at 14 (citing No. 2:04-cv-
`
`65, 2005 WL 6217423, at *10 (E.D. Tex. Sept. 7, 2005).) The context of the claims and the claim
`
`term “based on”is very different in that case, see id., but in any event, thepS
`i... not meet either of these definitions. First, that data is not an “input” to the calculation
`
`is not “taken into consideration”in the calculation ofresting heart rate—rather,it ‘iii
`
`IV.
`
`CONCLUSION
`
`Fitbit respectfully requests that the Court grant Fitbit’s motion for summary judgment.
`
`
`
`7 Philips attempts to convert Fitbit’s statement that Cardio Fitness Score and Cardio Fitness Level
`“rise and fall together” for purposes ofthis motion into an admission. (Dkt. 362 at 14 (citing Dkt.
`330 at 16).) But Fitbit’s statement simply acknowledges Dr. Martin’s theorythat they are both
`calculated “based on” the same alleged “exercise-related information,” it does not agree with Dr.
`Martin’s theory.
`(See Dkt. 330 at 16.) This is also irrelevant, because Fitbit’s argumenthere is
`that none ofFitbit’s determinations of resting heart rate, RHR Cardio Fitness Score, or RHR Cardio
`Fitness Level are “based on” any “exercise-related information” as required by the claims.
`* Philips also claims that “Fitbit does not dispute that the RHR Cardio Fitness Score calculation
`begins with the input of
`pointing out that
`>
`(Dkt. 362 at 14.) But Fitbit has always disputed that argument by
`
`including the
` the user’s
`resting heart rate calculation, begins.
`(See, e.g., Dkt. 330 at 17-18.)
`
`

`

`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 16 of 17
`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 16 of 17
`
`Dated: April 13, 2022
`
`By:
`
`/s/ David J. Shaw
`David J. Shaw (pro hacvice)
`dshaw(@desmaraisllp.com
`DESMARAIS LLP
`1701 Pennsylvania Ave., NW, Suite 200
`Washington, D.C. 20006
`Telephone: (202) 451-4900
`Facsimile: (202) 451-4901
`
`Karim Z. Oussayef(pro hacvice)
`koussayef@desmaraisllp.com
`Leslie M. Spencer (pro hacvice)
`Ispencer@desmaraisllp.com
`Brian D. Matty (pro hac vice)
`bmatty@desmaraisllp.com
`Henry Ard (pro hacvice)
`hard@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`NewYork, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`
`Ameet A. Modi (pro hacvice)
`amodi@desmaraisllp.com
`DESMARAIS LLP
`101 California Street
`San Francisco, CA 94111
`Telephone: (415) 573-1900
`Facsimile: (415) 573-1901
`
`Gregory F. Corbett (BBO #646394)
`gcorbett@wolfgreenfield.com
`Alexandra K. Kim (BBO #707361)
`akim@wolfgreenfield.com
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02110
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`
`Attorneysfor Defendant Fitbit LLC
`
`

`

`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 17 of 17
`Case 1:19-cv-11586-FDS Document 372 Filed 04/13/22 Page 17 of 17
`
`CERTIFICATE OF SERVICE
`
`I certify that this documentis being filed through the Court’s electronic filing system,
`whichserves counsel for other parties whoare registered participants as identified on the Notice
`of Electronic Filing (NEF). Any counsel for other parties who are not registered participants are
`being served byfirst class mail on the date ofthe electronic filing.
`
`Dated: April 13, 2022
`
`/s/ Alexandra K. Kim
`Alexandra K. Kim
`
`