Case 1:19-cv-11586-FDS Document 383 Filed 04/27/22 Page 1 of 4
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`Plaintiff,
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`v.
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`FITBIT LLC,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-FDS
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`FITBIT LLC’S MOTION FOR LEAVE TO SUBMIT SUPPLEMENTAL AUTHORITY
`FOR ITS MOTION TO STRIKE PORTIONS OF THE EXPERT REPORT AND
`EXCLUDE CERTAIN OPINIONS AND TESTIMONY OF DR. AKEMANN
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`On February 9, 2022, Defendant Fitbit LLC (“Fitbit”) filed a motion to strike portions of
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`the expert report and exclude certain opinions and testimony of Plaintiff Philips North America
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`LLC’s (“Philips”) damages expert Dr. Michael P. Akemann. (Dkt. 310.) The Court heard
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`argument on Fitbit’s motion to strike on March 14, 2022.
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`On April 11, 2022, the Federal Circuit issued a precedential opinion in Niazi Licensing
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`Corp. v. St. Jude Med. S.C., Inc., No. 2021-1864, -- F.4th --, 2022 U.S. App. LEXIS 9597 (Fed.
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`Cir. April 11, 2022) (attached as Ex. A). The Federal Circuit affirmed the district court’s exclusion
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`of portions of plaintiff’s damages expert report as unreliable and, held: “Damages should be
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`apportioned to separate out noninfringing uses, and patentees cannot recover damages based on
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`sales of products with the mere capability to practice the claimed method.” 2022 U.S. App. LEXIS
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`9597, *40. All asserted claims of the Patent-in-Suit are method claims, and Dr. Akemann makes
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`no “attempt to determine what portion of Fitbit’s accused revenues might be properly attributed to
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`the [Patent-in-Suit].” (Dkt. 310, at 16.)
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`Fitbit moves for leave to submit this precedential opinion as supplemental authority for its
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`Case 1:19-cv-11586-FDS Document 383 Filed 04/27/22 Page 2 of 4
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`motion to strike (Dkt. 310). Good cause exists in view of at least the following relevant excerpts
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`from the Federal Circuit opinion:
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`The district court excluded Mr. Carlson's expert opinion as legally
`insufficient because Mr. Carlson failed to “apportion” between
`infringing and noninfringing uses and because he could not
`properly include leads in the royalty base. We affirm the district
`court's exclusion.
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`. . . Mr. Carlson included in his damages calculations sales of all
`of St. Jude’s outer catheters, inner catheters, guide wires, and
`leads, even though it was undisputed that not all of those sold
`devices had been used to practice the claimed method. Whether
`one refers to this as failure to “apportion” as the parties and district
`court did or as failing to limit damages to a reasonable
`approximation of actual infringing uses of the claimed method, Mr.
`Carlson's failure to account for noninfringing uses of the sold
`devices was legally improper. In this regard, we disagree with
`Niazi's carefully worded assertion on appeal that apportionment
`does not apply to method claims. Damages should be apportioned to
`separate out noninfringing uses, and patentees cannot recover
`damages based on sales of products with the mere capability to
`practice the claimed method. Rather, where the only asserted claim
`is a method claim, the damages base should be limited to products
`that were actually used to perform the claimed method.
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`. . . Mr. Carlson did not address or rely on any evidence—such as
`testimony of electrophysiologists, other anecdotal testimony, or
`survey evidence—that estimated the amount or percentage of sold
`devices that were actually used to infringe the claimed method. . . .
`[E]ven assuming that the record supported the notion that the
`claimed method was the “predominant” method, predominant is a
`broad word that merely means “most frequent” or “common.” Such
`a broad, unsupported, and conclusory assertion does not reliably
`establish how often the patented method was used by doctors to
`allow a reasonable approximation of the damages base.
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`We are also not persuaded by Niazi’s argument that Mr. Carlson
`properly included leads in his calculation of the royalty base because
`he accounted for apportionment in the royalty rate. . . . There is
`simply no explanation of how (or even whether) he apportioned to
`account for unpatented uses when selecting the minimum royalty
`rate of 14.6%. . . .
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`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., No. 2021-1864, -- F.4th --, 2022 U.S. App.
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`Case 1:19-cv-11586-FDS Document 383 Filed 04/27/22 Page 3 of 4
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`LEXIS 9597, *39-42 (Fed. Cir. April 11, 2022) (emphasis added).
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`Dated: April 27, 2022
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`By:
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`/s/ Leslie M. Spencer
`David J. Shaw (pro hac vice)
`dshaw@desmaraisllp.com
`DESMARAIS LLP
`1701 Pennsylvania Ave., NW, Suite 200
`Washington, D.C. 20006
`Telephone: (202) 451-4900
`Facsimile: (202) 451-4901
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`Karim Z. Oussayef (pro hac vice)
`koussayef@desmaraisllp.com
`Leslie M. Spencer (pro hac vice)
`lspencer@desmaraisllp.com
`Brian D. Matty (pro hac vice)
`bmatty@desmaraisllp.com
`Henry Ard (pro hac vice)
`hard@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
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`Ameet A. Modi (pro hac vice)
`amodi@desmaraisllp.com
`DESMARAIS LLP
`101 California Street
`San Francisco, CA 94111
`Telephone: (415) 573-1900
`Facsimile: (415) 573-1901
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`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
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`Attorneys for Defendant Fitbit LLC
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`Case 1:19-cv-11586-FDS Document 383 Filed 04/27/22 Page 4 of 4
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`CERTIFICATE PURSUANT TO LOCAL RULE 7.1(A)(2)
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`The undersigned hereby certifies that counsel for Fitbit conferred with counsel for Philips
`and attempted in good faith to resolve or narrow the issues in dispute, but was unable to do so.
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`/s/ Leslie M. Spencer
`Leslie M. Spencer
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`Counsel for Defendant Fitbit LLC
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`CERTIFICATE OF SERVICE
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`I certify that this document is being filed through the Court’s electronic filing system,
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`which serves counsel for other parties who are registered participants as identified on the Notice
`of Electronic Filing (NEF). Any counsel for other parties who are not registered participants are
`being served by first class mail on the date of the electronic filing.
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`/s/ Alexandra K. Kim
`Alexandra K. Kim
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`Dated: April 27, 2022
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