Case 1:19-cv-11586-FDS Document 418 Filed 09/20/23 Page 1 of 5
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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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`MOTION TO DISMISS CLAIMS PERTAINING TO U.S. PAT. NO. 7,088,233 AND TO
`ENTER FINAL JUDGMENT ON U.S. PAT. NOS. 8,277,377 AND 6,013,007
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`Background / Prior Notice of Appeal
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`Philips filed a Notice of Appeal (Dkt. 415) in this matter on August 12, 2023 following
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`this Court’s denial (Dkt. 414) of Philips’s Motion for Reconsideration (Dkt. 403) of this Court’s
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`summary judgment order invalidating the asserted claims of U.S. Patent No. 8,277,377 (the “’377
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`patent”). Prior to that, the Federal Circuit affirmed the Patent Trial and Appeal Board’s final
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`written decision finding unpatentable the previously asserted claims of U.S. Patent No. 7,088,233
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`(the “’233 patent”), and during claim construction, this Court had found all asserted claims of the
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`only other asserted patent, U.S. Patent No. 6,013,007 (the “’007 patent”) to be invalid as indefinite
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`under 35 U.S.C. § 112. Thus, at the time of the filing of Philips’s Notice of Appeal (Dkt. 415), all
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`claims in the case had been resolved.
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` Defendant Fitbit LLC (“Fitbit”) has filed a docketing statement with the Federal Circuit
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`Court of Appeals suggesting that it will challenge the jurisdiction of the Federal Circuit in light of
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`no formal separate entry of Final Judgment by the District Court. See Ex. 1, Docketing Statement
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`for the Appellee Fitbit LLC, ECF No. 7, Philips N.A., LLC v. Fitbit LLC, CAFC-23-2286 (Fed.
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`Cir.). There is no dispute by Fitbit, to which Philips is aware, that all claims in the case have been
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`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
`
`
`
`
`MOTION TO DISMISS CLAIMS PERTAINING TO U.S. PAT. NO. 7,088,233 AND TO
`ENTER FINAL JUDGMENT ON U.S. PAT. NOS. 8,277,377 AND 6,013,007
`
`Background / Prior Notice of Appeal
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`Philips filed a Notice of Appeal (Dkt. 415) in this matter on August 12, 2023 following
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`this Court’s denial (Dkt. 414) of Philips’s Motion for Reconsideration (Dkt. 403) of this Court’s
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`summary judgment order invalidating the asserted claims of U.S. Patent No. 8,277,377 (the “’377
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`patent”). Prior to that, the Federal Circuit affirmed the Patent Trial and Appeal Board’s final
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`written decision finding unpatentable the previously asserted claims of U.S. Patent No. 7,088,233
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`(the “’233 patent”), and during claim construction, this Court had found all asserted claims of the
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`only other asserted patent, U.S. Patent No. 6,013,007 (the “’007 patent”) to be invalid as indefinite
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`under 35 U.S.C. § 112. Thus, at the time of the filing of Philips’s Notice of Appeal (Dkt. 415), all
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`claims in the case had been resolved.
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` Defendant Fitbit LLC (“Fitbit”) has filed a docketing statement with the Federal Circuit
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`Court of Appeals suggesting that it will challenge the jurisdiction of the Federal Circuit in light of
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`no formal separate entry of Final Judgment by the District Court. See Ex. 1, Docketing Statement
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`for the Appellee Fitbit LLC, ECF No. 7, Philips N.A., LLC v. Fitbit LLC, CAFC-23-2286 (Fed.
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`Cir.). There is no dispute by Fitbit, to which Philips is aware, that all claims in the case have been
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`Case 1:19-cv-11586-FDS Document 418 Filed 09/20/23 Page 2 of 5
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`resolved as explained. In an abundance of caution and in order to moot Fitbit’s objections, Philips
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`requests this Court issue an entry of Final Judgment as to the ’377 and ’007 Patent, and dismiss
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`the claims related to the invalidated ’233 Patent. Further, to the extent necessary, Philips intends
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`to file an additional Notice of Appeal following an entry of Final Judgment by this Court “in order
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`to avoid any doubts over [appellate] jurisdiction.” Clausen v. Sea-3, Inc., 21 F.3d 1181, 1183-84
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`(1st Cir. 1994).
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`Accordingly, Plaintiff Philips North America LLC (“Philips”) hereby files this Motion to
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`Dismiss claims pertaining to U.S. Patent No. 7,088,233 and enter judgment with respect to U.S.
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`Patent Nos. 8,277,377 and 6,013,007.
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`The Parties’ Claims and Counterclaims
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`Philips’s Second Amended Complaint, filed September 3, 2020, asserted three patents
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`against Fitbit: U.S. Patent No. 6,013,007 (the “’007 patent”), U.S. Patent No. 7,088,233 (the “’233
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`patent”), and U.S. Patent No. 8,277,377 (the “’377 patent”). Dkt. 112. Fitbit filed an Amended
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`Answer on October 10, 2021, asserting six counterclaims seeking declaratory judgments of non-
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`infringement and invalidity of each patent. Dkt. 245.
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`The ’233 Patent
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`On October 4, 2021, the Patent Trial and Appeal Board (“PTAB”) issued a final written
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`decision in IPR2020-00783 finding all asserted claims of the ’233 patent unpatentable. See Ex. 2
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`(Final Written Decision) at 46. On October 29, 2021, this Court orally granted a joint stipulation
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`of the parties to stay all proceedings related to the ’233 patent “pending a resolution of any appeals
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`of the Patent Trial and Appeal Board’s Final Written Decision in IPR2020-00783.” Dkt. 251; see
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`also Dkt. 252 (Transcript of October 29, 2021 Status Conference) at 7:16-19. On June 3, 2022,
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`this Court memorialized the oral order of October 29, 2021 and stayed all proceedings related to
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`Case 1:19-cv-11586-FDS Document 418 Filed 09/20/23 Page 3 of 5
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`the ’233 patent “pending the outcome of any appeal of the PTAB decision concerning that patent
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`or further order of the Court.” Dtk. 386. On April 6, 2023, the Federal Circuit affirmed the PTAB’s
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`finding that all asserted claims of the ’233 patent were unpatentable, and a mandate issued on May
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`15, 2023 as none of the parties filed further appeals. See Ex. Nos. 3-4 (Judgment and Mandate).
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`Philips moves this Court to dismiss all claims and counterclaims with regard to the ’233 patent
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`with prejudice.
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`The ’007 Patent
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`On July 22, 2021, this Court issued a Memorandum and Order on Claim Construction
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`finding all asserted claims of the ’007 patent to be indefinite under 35 U.S.C. § 112. Dkt. 212 at
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`12-21.
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`The ’377 Patent
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`On September 1, 2022, this Court issued a Memorandum and Order on Cross-Motions for
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`Summary Judgment finding all asserted claims of the ’377 patent to be invalid for claiming subject
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`matter not patentable under 35 U.S.C. § 101. Dkt. 401. Philips moved for reconsideration (Dkt.
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`403), and the Court denied this request on July 13, 2023 (Dkt. 414).
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`Request for Judgment
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`As the appeal concerning the ’233 patent is now fully resolved, and all remaining claims
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`and counterclaims pertaining to the ’007 and ’377 patents have been fully resolved or mooted by
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`prior orders, Philips moves that: (1) this Court dismiss all claims and counterclaims with regard to
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`U.S. Patent No. 7,088,233 with prejudice, and (2) this Court enter Final Judgment of invalidity as
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`to the asserted claims of U.S. Patent No. 6,013,007 and U.S. Patent No. 8,277,377, and to further
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`dismiss any remaining counterclaims without prejudice.
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`Case 1:19-cv-11586-FDS Document 418 Filed 09/20/23 Page 4 of 5
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`Respectfully Submitted,
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` Dated: September 20, 2023
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` /s/ Ruben J. Rodrigues
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`Ruben J. Rodrigues (BBO 676,573)
`Lucas I. Silva (BBO 673,935)
`John 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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`Counsel for Plaintiff
`Philips North America LLC
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`Case 1:19-cv-11586-FDS Document 418 Filed 09/20/23 Page 5 of 5
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`LOCAL RULE 7.2 CERTIFICATION
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`I, John W. Custer, counsel for Philips North America LLC, hereby certify that we have
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`conferred with counsel for Fitbit, Inc. to resolve the issues presented in this motion, but after a
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`good faith attempt to reach agreement, the parties did not do so.
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`Dated: September 20, 2023
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`/s/ John W. Custer
`John W. Custer
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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
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`the 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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`By: /s/ John W. Custer
` John W. Custer
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