`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`
`PHILIPS NORTH AMERICA LLC,
`
`v.
`
`FITBIT LLC,
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 1:19-cv-11586-FDS
`
`
`PHILIPS NORTH AMERICA LLC’S RESPONSE TO 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
`(DKT. 383)
`
`
`
`Plaintiff Philips North America LLC (“Philips”) respectfully submits this Opposition to
`
`Fitbit’s Motion for Leave to File Supplemental Authority, (Dkt. 383), regarding the Federal Circuit
`
`decision in Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 1339 (Fed. Cir. 2022).
`
`Niazi is not relevant to Fitbit’s pending motion to preclude certain opinions and testimony
`
`of Dr. Akemann. The Federal Circuit’s decision in Niazi concerns a complete failure to base
`
`damages on allegedly infringing products, an issue Fitbit did not raise in its pending motion
`
`challenging Dr. Akemann—instead Fitbit only challenged the comparability of the licenses used
`
`by Dr. Akemann while alleging (incorrectly) that Dr. Akemann applied the Entire Market Value
`
`Rule (“EMVR”), issues not addressed by Niazi. (See Dkt. 310 at 11-16.) Regardless, Dr.
`
`Akemann’s analysis apportioned by using the well-recognized comparable license approach to
`
`determine the proper assessment of damages via a per unit royalty rate, and included in his royalty
`
`base only products that infringe. (See Dkt. 320 at 2-16.) The Federal Circuit has recognized that
`
`apportionment is “built in” under the comparable license approach. Cmmw. Sci. and Indus.
`
`1
`
`
`
`Case 1:19-cv-11586-FDS Document 384 Filed 05/11/22 Page 2 of 4
`
`
`
`Research Organisation v. Cisco Sys., Inc., 809 F.3d 1295, 1303 (Fed. Cir. 2015). In contrast, the
`
`expert in Niazi used sales of any number of components (e.g. catheters, guide wires, and leads)—
`
`that undisputedly did not infringe and therefore should not have been accrued damages, Niazi, 30
`
`F.4th 1357.
`
`Nor does Niazi introduce any new legal authority that Fitbit could not have raised earlier.
`
`Rather, Niazi is nothing more than a straightforward application of Cardiac Pacemakers, Inc. v.
`
`St. Jude Med., Inc., 576 F.3d 1348, 1358–59 (Fed. Cir. 2009), and the uncontroversial principle
`
`that damages should only be recovered for infringement.
`
`The Court should deny Fitbit’s Motion for Leave to File Supplemental Authority as Niazi
`
`in neither helpful nor relevant to the issues in dispute.
`
`
`
`Dated: May 11, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
` /s/ Ruben J. Rodrigues
`Lucas I. Silva (BBO 673,935)
`Ruben J. Rodrigues (BBO 676,573)
`John W. Custer (BBO 705,258)
`FOLEY & LARDNER LLP
`111 Huntington Avenue
`Suite 2500
`Boston, MA 02199-7610
`Phone: (617) 342-4000
`Fax: (617) 342-4001
`lsilva@foley.com
`rrodrigues@foley.com
`jcuster@foley.com
`
`
`Eley O. Thompson (pro hac vice)
`FOLEY & LARDNER LLP
`321 N. Clark Street
`Suite 2800
`Chicago, IL 60654-5313
`Phone: (312) 832-4359
`Fax: (312) 832-4700
`ethompson@foley.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:19-cv-11586-FDS Document 384 Filed 05/11/22 Page 3 of 4
`
`
`
`
`
`
`
`
`
`Michelle A. Moran
`FOLEY & LARDNER LLP
`777 East Wisconsin Avenue
`Milwaukee, WI 53202
`Phone: (414) 271-2400
`Fax: (414)297-4900
`mmoran@foley.com
`
`Counsel for Plaintiff
` Philips North America LLC
`
`
`
`
`
`
`
`Case 1:19-cv-11586-FDS Document 384 Filed 05/11/22 Page 4 of 4
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing document was filed with the
`
`Court through the ECF system and that a copy will be electronically served on registered
`
`participants as identified on the Notice of Electronic Filing.
`
`Dated: May 11, 2022
`
`
`
`
`
`/s/ Ruben J. Rodrigues
`Ruben J. Rodrigues
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
