Case 1:19-cv-11586-FDS Document 409 Filed 12/01/22 Page 1 of 11
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`v.
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`FITBIT, LLC,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-FDS
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`ORAL ARGUMENT REQUESTED
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`PHILIPS NORTH AMERICA LLC’S REPLY BRIEF IN SUPPORT OF ITS
`MOTION FOR RECONSIDERATION (Dkt. 403)
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`Case 1:19-cv-11586-FDS Document 409 Filed 12/01/22 Page 2 of 11
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`TABLE OF CONTENTS
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`Introduction ............................................................................................................................. 1 
`I. 
`II.  Argument ................................................................................................................................ 1 
`A. 
`Fitbit Does Not Defend the Court’s Misinterpretation of Berkheimer ................... 1 
`B. 
`The Court Can Reconsider its Decision and Should not “Ignore” Error as Fitbit
`Requests .................................................................................................................. 2 
`The Court’s Opinion Relied on the Incorrect Determination That the Inventive
`Concepts Were Not Captured by the Claims .......................................................... 3 
`The Court’s Opinion Did Not Find That the Claims Failed to Eliminate Location
`Based Restraints ...................................................................................................... 4 
`Fitbit Did Not Present Any Evidence of Conventionality With Regard to the
`Ordered Combination of Elements ......................................................................... 5 
`III.  Conclusion .............................................................................................................................. 6 
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`C. 
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`D. 
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`E. 
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`Case 1:19-cv-11586-FDS Document 409 Filed 12/01/22 Page 3 of 11
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`TABLE OF AUTHORITIES
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`Cases
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`Am. Axle & Mfg., Inc. v. Neapco Holdings LLC,
` 967 F.3d 1285 (Fed. Cir. 2020)................................................................................................... 3
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`Berkheimer v. HP Inc.,
` 881 F.3d 1360 (Fed. Cir. 2018)........................................................................................... 1, 2, 3
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`Cooperative Entertainment v. Kollective Tech.,
` 50 F.4th 127 (Fed. Cir. 2022) ................................................................................................. 1, 2
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`Cosmo Key Sols. GmbH & Co. KG v. Duo Sec. LLC,
` 15 F.4th 1091 (Fed. Cir. 2021) ............................................................................................... 1, 2
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`DeGrandis v. Children’s Hosp. Boston,
` No. 14-10416, 2015 WL 1959433 (D. Mass. Apr. 30, 2015) ..................................................... 2
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`Fernández–Vargas v. Pfizer,
` 522 F.3d 55 (1st Cir. 2008) ......................................................................................................... 2
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`Perfect Curve, Inc. v. Hat World, Inc.
` 988 F.Supp.2d 38 (D. Mass. 2013) ............................................................................................. 2
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`ii
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`I.
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`Case 1:19-cv-11586-FDS Document 409 Filed 12/01/22 Page 4 of 11
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`Introduction
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`As explained in Philips’s Motion, Philips seeks reconsideration because the Court appears
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`to have misunderstood Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) as requiring that the
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`“reasons why” an inventive concept is inventive be explicitly recited in a claim in addition to the
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`inventive concept itself. See Dkt. 404 at 5-9. While Fitbit opposes the Motion, its Opposition
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`(Dkt. 406) only serves to reinforce the fact that reconsideration is appropriate. Fitbit’s Opposition
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`is devoid of any rebuttal to Philips’s argument that Berkheimer was misapplied. Instead, Fitbit’s
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`brief largely focuses on the purported reasons why the Court’s decision should be sustained even
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`if the Court misapplied Berkheimer. Essentially, Fitbit asks that the Court “ignore” its error and
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`sustain its earlier decision on alternative grounds not fully reached in the Court’s original
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`opinion—which would be improper.
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`II.
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`Argument
`A.
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`Fitbit Does Not Defend the Court’s Misinterpretation of Berkheimer
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`In resignation to the truth, Fitbit does not even attempt to defend the Court’s misapplication
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`of Berkheimer, and provides no rebuttal to Philips’s explanation that Berkheimer did not (as this
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`Court held) require that claims recite ipsis verbis the “reasons why” inventive concepts are
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`inventive. See Dkt. 404 at 5-8.1 Nor does Fitbit dispute that applying this Court’s test would have
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`led to the opposite result in Berkheimer. See Dkt. 404 at 8-9.
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`Further, Fitbit did not dispute that the Federal Circuit has consistently found claims patent
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`eligible that do not explicitly recite the “reasons why” they are unconventional, and failed to
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`address cases like Cosmo Key and Cooperative Entertainment discussed in Philips’s brief. See Dkt.
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`404 at 9-12 (discussing Cosmo Key Sols. GmbH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091 (Fed.
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`1 The closest Fitbit ever comes to a response to Philips’s arguments concerning the Court’s misapplication of
`Berkheimer consist of simply interjecting the words “and it did not”, in a conclusory fashion, in the following
`sentence: “Thus, even if the Court did misapply Berkheimer in finding that the alleged inventive concepts are not
`captured in the claims—and it did not—that would be irrelevant here . . . .” Dkt. 406 at 8.
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`1
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`Case 1:19-cv-11586-FDS Document 409 Filed 12/01/22 Page 5 of 11
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`Cir. 2021) and Cooperative Entertainment v. Kollective Tech., 50 F.4th 127 (Fed. Cir. 2022)).
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`These cases including Cooperative Entertainment are very recent explanations of the proper
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`application of eligibility law demonstrating error in this Court’s Opinion. Fitbit does not even cite
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`these cases let alone attempt to reconcile this Court’s Opinion with them. See generally, Dkt. 406.
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`B.
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`The Court Can Reconsider its Decision and Should not “Ignore” Error as
`Fitbit Requests
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`Instead of disputing Philips’s analysis of the relevant law, Fitbit asks this Court to simply
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`“ignore” the Court’s misapplication of Berkheimer. Dkt. 406 at 3 (“Philips’s arguments should be
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`ignored”). Fitbit advocates for a bright-line rule that legal “errors of reasoning” can never be
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`reconsidered by the Court that made them as that does not constitute a “mistake” under Fed. R.
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`Civ. P. 60(b)(1). See Dkt 406 at 2. However, Fitbit’s argument ignores the fact that in addition to
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`Rule 60(b)(1), Philips moved for reconsideration under both Fed. R. Civ. P. 60(b)(6) as well as
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`this Court’s inherent power to reconsider interlocutory orders. See Dkt. 404 at 1-2. Indeed, the
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`First Circuit has explicitly encouraged district courts to make use of its inherent power when error
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`is apparent. Fernández–Vargas v. Pfizer, 522 F.3d 55, 61 n.2 (1st Cir. 2008) (“While the Federal
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`Rules do not provide for a “motion to reconsider”, a district court has the inherent power to
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`reconsider its interlocutory orders, and we encourage it to do so where error is apparent”). Further,
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`this Court has previously granted motions for reconsideration based on “errors of reasoning”. See
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`e.g. DeGrandis v. Children’s Hosp. Boston, No. 14-10416, 2015 WL 1959433, at *5 (D. Mass.
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`Apr. 30, 2015) (reconsidering earlier ruling that repudiation was properly before the court as this
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`was a manifest error of law); Perfect Curve, Inc. v. Hat World, Inc., 988 F.Supp.2d 38, 59-60 (D.
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`Mass. 2013) (reconsidering claim construction order).
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`Fitbit also does not dispute that it never relied on Berkheimer for the proposition that claims
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`must recite the “reasons why” they are inventive. See Dkt. 404 at 6, n.7; Dkt. 406 at 5-6. And Fitbit
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`2
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`Case 1:19-cv-11586-FDS Document 409 Filed 12/01/22 Page 6 of 11
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`did not cite to any other case law for this proposition in its summary judgement briefing.2 See
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`generally Dkt. 334 at 10-15. Thus Philips could not have anticipated that the Court would rely
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`heavily on a misinterpretation of Berkheimer. See Opinion at 18-19 (“The Federal Circuit’s
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`decision in Berkheimer is instructive”). As such, Philips’s analysis of Berkheimer in its Motion for
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`Reconsideration does not merely “rehash old arguments that it previously made or could have
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`made” as Fitbit alleges, but rather addresses the core misunderstanding, which Fitbit
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`acknowledged by no contest. See Dkt. 406 at 1.
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`C.
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`The Court’s Opinion Relied on the Incorrect Determination That the
`Inventive Concepts Were Not Captured by the Claims
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`The Opinion was explicit in its finding that “the alleged inventive concepts are not found
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`in Claim 1” and that “the two alleged inventive concepts are set out in the specification, not the
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`claim”. (Opinion at 17-18). After making this incorrect determination (based on the
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`aforementioned misapplication of Berkheimer), the Court’s Opinion continued Step 2 of the
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`Mayo/Alice analysis without further analyzing whether the ordered combination of the inventive
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`concepts alleged by Philips transformed the nature of the claim into a patent-eligible application.
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`Opinion at 19-25. Instead, the Court put aside Philips’s advanced inventive concepts (upon
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`incorrectly determining that they were not claimed) and simply looked at each individual claim
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`element3 before coming to the conclusion that the claim lacked an inventive concept under Step 2.
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`2 The lone case cited in Fitbit’s summary judgment brief regarding whether the inventive concepts were tethered to
`the claims was Am. Axle, and as Philips pointed out in its opposition brief, Fitbit’s reliance on this case was
`unexplained as the citation was only to basic 101 section eligibility. See Dkt. 334 at 5 (citing Am. Axle & Mfg., Inc.
`v. Neapco Holdings LLC, 967 F.3d 1285, 1293 (Fed. Cir. 2020)); Dkt. 361 at 15, n.3; see also Dkt. 404 at 12-13
`(further distinguishing Am. Axle).
`3 Fitbit’s argument that this is a “false” claim by Philips ignores the fact that while the Court’s opinion concluded
`that when “[c]onsidering the elements of the claim both individually and as an ordered combination, the ’377 patent
`lacks the necessary inventive concept”, the Court’s analysis focused almost exclusively on individual claim
`elements. See Opinion at 21-24. Indeed, as explained in Philips’s brief, the portions of Dr. Quy’s testimony relied
`upon in the Court’s Opinion were directed to answering whether he invented the individual elements of the claim as
`opposed to a new overall combination. Dkt. 404 at 14-18, 19, n. 17.
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`3
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`See Opinion at 20 (“When unclaimed improvements are put aside, it is clear that Claim 1 of the
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`’377 patent lacks an inventive concept.”)
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`However, Fitbit now contends that the Court allegedly “did not address or rely on” the
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`argument that the second inventive concept (“monitoring exercise with an application downloaded
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`to a web-enabled wireless phone”) was not captured by the claims. See Dkt. 406 at 7. Fitbit
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`provides no basis for this contention, nor does Fitbit attempt to reconcile it with the Court’s clear
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`determination that “the alleged inventive concepts are not found in Claim 1.” Opinion at 17
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`(emphasis added). And if, as Fitbit alleges, the Court in fact did not determine that the second
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`inventive concept was not captured by the claim, its subsequent failure to analyze this inventive
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`concept in the rest of its Step 2 analysis would itself be error.
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`D.
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`The Court’s Opinion Did Not Find That the Claims Failed to Eliminate
`Location Based Restraints
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`While the Court’s Opinion referenced Fitbit’s argument by acknowledging that “Fitbit
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`asserts that Claim 1 does not include the elimination of location-based restraints, and, in fact,
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`encompasses a wired connection”, the Opinion never comes to that conclusion itself. Opinion at
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`13. Thus, Fitbit’s emphasis on this argument (see Dkt. 406 at 6-7) is nothing more than a red
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`herring as the Court’s Opinion was not based on this reasoning. Further, as explained previously,
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`Fitbit’s arguments on this point fail because they focus on the wrong connection. Location based
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`restraints are eliminated because the claimed mobile device necessarily communicates over a
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`wireless network whether or not it may occasionally be tethered to a treadmill via a wire (and the
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`claims do not require any such wired connection). See Dkt. 404 at 4, n.4 Fitbit’s argument is that
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`the invention is not free of location based restraints because a wireless phone used in practicing
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`claim 1 could be (but does not necessarily need to be) connected to a treadmill by a wire—despite
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`the wireless phone otherwise being wireless and mobile, and transportable from one place to
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`another. This is tantamount to arguing that a wireless phone is not mobile because it occasionally
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`4
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`could be connected by a wire to one’s computer. Fitbit does not contend, because it cannot, that
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`the claims fail to enable wireless connections. The fact remains that by utilizing a wireless phone
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`Claim 1 frees the claimed exercise monitoring system from location based restraints, as the
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`wireless phone can be taken anywhere—even if occasionally connected via wire to an exercise
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`device.
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`Regardless, Fitbit ignores the fact that claims 5 and 6 explicitly require that the connection
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`between the web-enabled wireless phone and device which provides exercise-related information
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`be “wireless”—claimed embodiments which even under Fitbit’s view would nonetheless be free
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`of location-based restraints. See U.S. Patent No. 8,277,377 at 13:58-65.
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`E.
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`Fitbit Did Not Present Any Evidence of Conventionality With Regard to the
`Ordered Combination of Elements
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`When Philips stated that “Fitbit failed to present any evidence of conventionality with
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`regard to the ordered combination of elements,” the assertion was not “false[]” as Fitbit alleges.
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`Dkt. 406 at 9; Dkt. 404 at 13. Specifically, none of the purported evidence cited in Fitbit’s motion
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`for summary judgment demonstrated that the ordered combination of elements that make up the
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`inventive concepts were conventional. Philips’s point is that the evidence, when actually looked
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`at, only considered claim elements in isolation rather than as an ordered combination reflecting the
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`inventive concepts that Philips advanced.4 For example, Fitbit pointed to evidence that allegedly
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`demonstrated that individual elements were conventional, but no evidence that either of the two
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`inventive concepts (i.e. “(1) performing computations utilizing a back-end server to remove
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`location-based restraints and (2) monitoring exercise with an application downloaded to a web-
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`enabled wireless phone”) were conventional. See Dkt. 334 at 8-11, 15-18; Dkt. 374 at 2-5. Nor
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`4 Whether they are ultimately found to be inventive, such as under 35 U.S.C. §102/103, is for the Jury to decide
`based on the evidence, not this Court as even Fitbit agrees. See Dkt. 406 at n.4.
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`5
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`does Fitbit identify any specific evidence in its Opposition (despite accusing Philips of “false”
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`statements) that demonstrates that the ordered combination of elements was conventional.
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`III. Conclusion
`Philips respectfully requests that this Court grant its Motion for Reconsideration and deny
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`Fitbit’s motion for summary judgment of invalidity (Dkt. 333) and resolve on the merits the
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`motions for summary judgment5 and motions to strike6 that were denied as moot. See Opinion at
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`26.
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`Dated: December 1, 2022
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`5 Dkt. Nos. 329, 331, 335, 336.
`6 Dkt. Nos. 259, 268, 300, 304, 305.
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`Respectfully Submitted,
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` /s/ Eley O. Thompson
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`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
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`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
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`6
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`Case 1:19-cv-11586-FDS Document 409 Filed 12/01/22 Page 10 of 11
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`Michelle A. Moran
`FOLEY & LARDNER LLP
`777 East Wisconsin Avenue
`Milwaukee, WI 53202
`Phone: (414) 271-2400
`Fax: (414)297-4900
`mmoran@foley.com
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`Counsel for Plaintiff
` Philips North America LLC
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`Case 1:19-cv-11586-FDS Document 409 Filed 12/01/22 Page 11 of 11
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document was filed with the
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`Court through the ECF system and that a copy will be electronically served on registered
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`participants as identified on the Notice of Electronic Filing.
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`Dated: December 1, 2022
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`/s/ John W, Custer
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`8
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