Case 1:19-cv-11586-FDS Document 420 Filed 09/25/23 Page 1 of 4
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`Civil Action No. 1:19-cv-11586-FDS
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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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`DEFENDANT FITBIT LLC’S RESPONSE TO PHILIPS NORTH AMERICA LLC’S
`MOTION TO DISMISS AND TO ENTER FINAL JUDGMENT
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`Fitbit LLC (“Fitbit”) does not dispute Philips North America LLC’s (“Philips”) summary
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`of the current posture of its claims in this case. Fitbit agrees that Philips’ claims for patent
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`infringement of all three asserted patents have been defeated on their merits:
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` The asserted claims of U.S. Patent No. 6,013,007 were held invalid as indefinite
`under 35 U.S.C. § 112 in this Court’s Memorandum and Order on Claim
`Construction, issued on July 22, 2021. (ECF No. 212.)
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` The asserted claims of U.S. Patent No. 8,277,377 were held invalid as directed to
`unpatentable subject matter under 35 U.S.C. § 101 in this Court’s Memorandum
`and Order on Cross-Motions for Summary Judgment, issued on September 1, 2022.
`(ECF No. 401.) That Order was confirmed by this Court’s denial of Philips’ motion
`for reconsideration on July 13, 2023. (ECF No. 414.)
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` The asserted claims of U.S. Patent No. 7,088,233 were held unpatentable in a final
`written decision by the Patent Trial and Appeal Board on October 4, 2021, which
`was affirmed by the U.S. Court of Appeals for the Federal Circuit on April 6, 2023.
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`Fitbit also agrees with Philips that, before any further appellate review can proceed at the
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`Federal Circuit on any of the above issues, this Court must enter a final judgment that disposes of
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`all claims and counterclaims. See, e.g., SafeTCare Mfg. v. Tele-Made, Inc., 497 F.3d 1262, 1267
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`(Fed. Cir. 2007); Nystrom v. TREX Co., 339 F.3d 1347, 1350 (Fed. Cir. 2003).
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`Case 1:19-cv-11586-FDS Document 420 Filed 09/25/23 Page 2 of 4
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`However, Philips already filed a notice of appeal to the Federal Circuit. (See ECF No.
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`415.) “The filing of a notice of appeal is an event of jurisdictional significance -- it confers
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`jurisdiction on the court of appeals and divests the district court of its control over those aspects
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`of the case involved in the appeal.” Griggs v. Provident Consumer Discount Co., 459 U.S. 56, 58
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`(1982); see also United States v. George, 841 F.3d 55, 71 (1st Cir. 2016) (“[W]e start with the
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`abecedarian principle that once a notice of appeal is filed, the district court is divested of ‘authority
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`to proceed with respect to any matter touching upon, or involved in, the appeal.’) (quoting United
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`States v. Brooks, 145 F.3d 446, 455 (1st Cir. 1998)). The pendency of Philips’ appeal thus calls
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`into question this Court’s jurisdiction to take the actions that Philips requests in its motion.
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`This jurisdictional problem is of Philips’ own making—Philips prematurely filed its notice
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`of appeal before this Court entered a final judgment disposing of all claims and counterclaims.
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`And now, before the Court can take further action in this case, including entering the final
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`judgment that Philips requests, Philips must take action to restore this Court’s jurisdiction. To that
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`end, Fitbit requested that Philips clear the jurisdictional roadblock by moving to dismiss the
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`prematurely-filed appeal, but Philips has refused to do so. (See Ex. 1.)
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`At bottom, Fitbit has no objection to joining—at the appropriate time after the appeal is
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`dismissed—a request for this Court to enter a final judgment that would dispose of all claims and
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`create a clear pathway for Philips to seek appellate review at the Federal Circuit. But as it currently
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`stands, this case is a paradigmatic example of the type of confusion that courts have attempted to
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`avoid by establishing that only one court—either the district court or the appellate court—can have
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`jurisdiction at any given time. See George, 841 F.3d at 71 (“This principle ‘derives from the notion
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`that shared jurisdiction almost always portends a potential for conflict and confusion.’”) (quoting
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`2
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`Case 1:19-cv-11586-FDS Document 420 Filed 09/25/23 Page 3 of 4
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`Brooks, 145 F.3d at 455). Because this Court should not take any action until its jurisdiction has
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`been clearly restored through the dismissal of the pending appeal, Fitbit opposes Philips’ motion.
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`/s/ Elizabeth A. DiMarco
`David J. Shaw (pro hac vice)
`dshaw@desmaraisllp.com
`DESMARAIS LLP
`1899 Pennsylvania Ave., NW, Suite 400
`Washington, D.C. 20006
`Telephone: (202) 451-4900
`Facsimile: (202) 451-4901
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`Leslie M. Spencer (pro hac vice)
`lspencer@desmaraisllp.com
`Karim Z. Oussayef (pro hac vice)
`koussayef@desmaraisllp.com
`Brian D. Matty (pro hac vice)
`bmatty@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
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`Gregory F. Corbett (BBO #646394)
`gcorbett@wolfgreenfield.com
`Elizabeth A. DiMarco (BBO #681921)
`edimarco@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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`Dated: September 25, 2023
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`By:
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`3
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`Case 1:19-cv-11586-FDS Document 420 Filed 09/25/23 Page 4 of 4
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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/ Elizabeth A. DiMarco
`Elizabeth A. DiMarco
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