Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 1 of 10
`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 1 of 10
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 1 of 10
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 2 of 10
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Adam Steinmetz
`Custer, John W.; David Shaw
`Fitbit Philips DC Appeal; BOST - F - Philips - Fitbit
`RE: Philips v. Fitbit - No. 1:19-cv-11586-FDS - Proposed Joint Motion
`Friday, September 15, 2023 4:07:00 PM
`
`John,
`
`Thanks for our meeting this afternoon.
`
`As a follow-up, I can confirm that Fitbit will oppose the motions Philips intends to file in the district
`court, so you can file those as opposed.
`
`Additionally, you confirmed during the call that Philips will not move in the Federal Circuit to dismiss
`the appeal. You also confirmed that Philips will oppose a motion by Fitbit in the Federal Circuit to
`dismiss the appeal.
`
`As for the other issues we discussed, we are working on the appendix materials, and we will get back
`to you on that next week. And you noted that you may seek an extension of the deadline for the
`brief, but you will follow up on any extension request you intend to make.
`
`Please let me know if I owe you a response on anything else.
`
`Regards,
`Adam
`
`From: Custer, John W. <jcuster@foley.com>
`Sent: Thursday, September 14, 2023 9:17 PM
`To: Adam Steinmetz <asteinmetz@desmaraisllp.com>; David Shaw <DShaw@desmaraisllp.com>
`Cc: Fitbit Philips DC Appeal <FitbitPhilipsDCAppeal@desmaraisllp.com>; BOST - F - Philips - Fitbit
`<BOSTFPhilipsFitbit@foley.com>
`Subject: [Ext] Re: Philips v. Fitbit - No. 1:19-cv-11586-FDS - Proposed Joint Motion
`
`**EXTERNAL EMAIL** This email originated from outside the company. Do not click on any link unless you
`recognize the sender and have confidence the content is safe.
`
`
`Hey Adam,I can confirm that tomorrow at 1:30pm will work. I will circulate an invite tomorrow morning. Best,JohnFrom: Adam Steinmetz <asteinmetz@desmaraisllp.com>Sent: Thursday, September 14, 2023 7:59:35 PMTo: Custer, John W. <jcuster@foley.com>; David Shaw <DShaw
`
`Hey Adam,
`I can confirm that tomorrow at 1:30pm will work. I will circulate an invite tomorrow
`morning.
`Best,
`John
`
`From: Adam Steinmetz <asteinmetz@desmaraisllp.com>
`Sent: Thursday, September 14, 2023 7:59:35 PM
`To: Custer, John W. <jcuster@foley.com>; David Shaw <DShaw@desmaraisllp.com>
`Cc: Fitbit Philips DC Appeal <FitbitPhilipsDCAppeal@desmaraisllp.com>; BOST - F - Philips -
`
`
`
`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 3 of 10
`
`Fitbit <BOSTFPhilipsFitbit@foley.com>
`Subject: Re: Philips v. Fitbit - No. 1:19-cv-11586-FDS - Proposed Joint Motion
`
`** EXTERNAL EMAIL MESSAGE **
`
`
`Thanks John. Let us know. Otherwise, Monday should work too. Thanks.
`
`From: Custer, John W. <jcuster@foley.com>
`Sent: Thursday, September 14, 2023 6:50:54 PM
`To: Adam Steinmetz <asteinmetz@desmaraisllp.com>; David Shaw <DShaw@desmaraisllp.com>
`Cc: Fitbit Philips DC Appeal <FitbitPhilipsDCAppeal@desmaraisllp.com>; BOST - F - Philips - Fitbit
`<BOSTFPhilipsFitbit@foley.com>
`Subject: [Ext] Re: Philips v. Fitbit - No. 1:19-cv-11586-FDS - Proposed Joint Motion
`
`**EXTERNAL EMAIL** This email originated from outside the company. Do not click on any link unless you
`recognize the sender and have confidence the content is safe.
`
`
`Hey Adam, I will need to check with the rest of my team regarding availability for a call. But let's
`tentatively plan to have one tomorrow at 1:30 pm.
`Best,
`John
`
`From: Adam Steinmetz <asteinmetz@desmaraisllp.com>
`Sent: Thursday, September 14, 2023 6:17:27 PM
`To: Custer, John W. <jcuster@foley.com>; David Shaw <DShaw@desmaraisllp.com>
`Cc: Fitbit Philips DC Appeal <FitbitPhilipsDCAppeal@desmaraisllp.com>; BOST - F - Philips - Fitbit
`<BOSTFPhilipsFitbit@foley.com>
`Subject: RE: Philips v. Fitbit - No. 1:19-cv-11586-FDS - Proposed Joint Motion
`
`** EXTERNAL EMAIL MESSAGE **
`
`
`
`John,
`
`The Federal Circuit applies Rule 4(a)(2) when an appellant is under the mistaken impression
`that the notice of appeal was timely because all issues were resolved. See Meade Instruments
`Corp. v. Reddwarf Starware, LLC, 250 F.3d 759 (Fed. Cir. 2000) (unpublished) (attached).
`That is not the situation here because, by your concession, claims remain pending in the
`district court that currently preclude the entry of judgment. See, e.g., id. (“[I]mportantly,
`Reddwarf’s motion for Rule 54(b) certification belies any notion that it was under the
`mistaken impression that the district court’s order was final and appealable.”). Furthermore,
`as indicated by my prior email, Fitbit is not willing to join Philips’ proposed filings in the
`district court while the appeal remains pending; the appeal must first be dismissed, after which
`time the district court can take the actions you propose.
`
`Perhaps it would be best to talk this through on a call. We can be available tomorrow between
`
`
`
`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 4 of 10
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`11 am and 3 pm EST, or we can talk on Monday. Please let us know your availability.
`
`Regards,
`Adam Steinmetz
`
`
`Adam Steinmetz
`
`DESMARAIS LLP
`1899 Pennsylvania Ave, N.W.
`Washington, D.C. 20006
`T: (202) 451-4936
`asteinmetz@desmaraisllp.com
`
`
`
`
`
`
`From: Custer, John W. <jcuster@foley.com>
`Sent: Wednesday, September 13, 2023 11:49 AM
`To: Adam Steinmetz <asteinmetz@desmaraisllp.com>; David Shaw <DShaw@desmaraisllp.com>
`Cc: Fitbit Philips DC Appeal <FitbitPhilipsDCAppeal@desmaraisllp.com>; BOST - F - Philips - Fitbit
`<BOSTFPhilipsFitbit@foley.com>
`Subject: [Ext] RE: Philips v. Fitbit - No. 1:19-cv-11586-FDS - Proposed Joint Motion
`
`**EXTERNAL EMAIL** This email originated from outside the company. Do not click on any link unless you
`recognize the sender and have confidence the content is safe.
`
`
`
`
`Hey Adam,
`Philips considers the Notice of Appeal to have been timely filed and thus disputes Fitbit’s contention
`that the Federal Circuit lacks jurisdiction. However, even if the Notice of Appeal was premature (as
`Fitbit contends), it would ripen into a proper Notice of Appeal following an entry of final judgment
`by the Court pursuant to Federal Rule of Appellate Procedure 4(a)(2). Thus, Philips does not intend
`to dismiss its present appeal. As Fitbit appears unwilling to join our motion to the District Court,
`please let us know by the end of the week whether Fitbit plans to oppose such a motion by Philips.
`Best,
`
`John Custer
`Foley & Lardner LLP
`111 Huntington Avenue | Suite 2500
`Boston, MA 02199-4001
`P 617.226.3148
`Pronouns: He/Him/His
`
`
`
`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 5 of 10
`
`
`
`From: Adam Steinmetz <asteinmetz@desmaraisllp.com>
`Sent: Monday, September 11, 2023 4:38 PM
`To: Custer, John W. <jcuster@foley.com>; David Shaw <DShaw@desmaraisllp.com>
`Cc: Fitbit Philips DC Appeal <FitbitPhilipsDCAppeal@desmaraisllp.com>; BOST - F - Philips -
`Fitbit <BOSTFPhilipsFitbit@foley.com>
`Subject: RE: Philips v. Fitbit - No. 1:19-cv-11586-FDS - Proposed Joint Motion
`
`
`
`** EXTERNAL EMAIL MESSAGE **
`
`
`
`John,
`
`Based on your email, it appears that Philips does not dispute that the Notice of Appeal was
`filed prematurely, and that under the current procedural posture the Federal Circuit lacks
`jurisdiction. Accordingly, we do not agree that the jurisdictional problem would be
`“mooted” by your proposed course of action, which would involve filings exclusively in the
`district court. Rather, the appeal must be dismissed without prejudice until such time as the
`district court issues final judgment resolving all claims and defenses.
`
`Accordingly, we propose that Philips first file an unopposed motion in the Federal Circuit to
`dismiss the present appeal without prejudice. Once that motion has been granted, Fitbit is
`willing to join a motion requesting that the district court (1) lift the stay with respect to the
`’233 patent, (2) dismiss Philips’ claims relating to the ’233 patent with prejudice, and (3)
`enter final judgment with respect to the ’007 and ’377 patents.
`
`Please let us know if you agree to this proposal.
`
`Regards,
`
`Adam Steinmetz
`
`
`
`DESMARAIS LLP
`
`1899 Pennsylvania Ave, N.W.
`
`
`
`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 6 of 10
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`Washington, D.C. 20006
`
`T: (202) 451-4936
`
`asteinmetz@desmaraisllp.com
`
`
`
`
`
`
`
`From: Custer, John W. <jcuster@foley.com>
`Sent: Wednesday, September 6, 2023 10:47 AM
`To: David Shaw <DShaw@desmaraisllp.com>
`Cc: Fitbit Philips DC Appeal <FitbitPhilipsDCAppeal@desmaraisllp.com>; BOST - F - Philips -
`Fitbit <BOSTFPhilipsFitbit@foley.com>
`Subject: [Ext] RE: Philips v. Fitbit - No. 1:19-cv-11586-FDS - Proposed Joint Motion
`
`
`
`**EXTERNAL EMAIL** This email originated from outside the company. Do not click on any link unless
`you recognize the sender and have confidence the content is safe.
`
`
`
`
`
`Thanks David. Can you please let us know by end of day Monday?
`
`Best,
`
`John Custer
`Foley & Lardner LLP
`111 Huntington Avenue | Suite 2500
`Boston, MA 02199-4001
`P 617.226.3148
`Pronouns: He/Him/His
`
`
`
`From: David Shaw <DShaw@desmaraisllp.com>
`Sent: Wednesday, September 6, 2023 10:22 AM
`To: Custer, John W. <jcuster@foley.com>
`
`
`
`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 7 of 10
`
`Cc: Fitbit Philips DC Appeal <FitbitPhilipsDCAppeal@desmaraisllp.com>; BOST - F -
`Philips - Fitbit <BOSTFPhilipsFitbit@foley.com>
`Subject: RE: Philips v. Fitbit - No. 1:19-cv-11586-FDS - Proposed Joint Motion
`
`
`
`** EXTERNAL EMAIL MESSAGE **
`
`
`
`Hi John,
`
`
`
`We need to discuss and consider this with our client, so we are unlikely to respond
`substantively this week. We’ll get back to you.
`
`
`
`Best,
`
`David
`
`
`
`David J. Shaw
`Desmarais LLP
`1899 Pennsylvania Avenue NW
`Washington, DC 20006
`T: (202) 451-4900 | F: (202) 451-4901
`
`D: (202) 451-4913 | E: dshaw@desmaraisllp.com
`
`
`
`From: Custer, John W. <jcuster@foley.com>
`Sent: Wednesday, September 6, 2023 10:04 AM
`To: David Shaw <DShaw@desmaraisllp.com>
`Cc: Fitbit Philips DC Appeal <FitbitPhilipsDCAppeal@desmaraisllp.com>; BOST - F -
`Philips - Fitbit <BOSTFPhilipsFitbit@foley.com>
`Subject: [Ext] Philips v. Fitbit - No. 1:19-cv-11586-FDS - Proposed Joint Motion
`
`
`
`**EXTERNAL EMAIL** This email originated from outside the company. Do not click on any
`link unless you recognize the sender and have confidence the content is safe.
`
`
`
`
`
`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 8 of 10
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`
`
`Hey David,
`
`In view of the comments included in Fitbit’s Docketing statement, we think any
`potential issue of jurisdiction can be mooted by requesting a final judgment from
`District Court. To that end, we’ve prepared a motion requesting the Court (1) lift the
`stay on the ’233 patent, (2) dismiss all claims/counterclaims relating to the ’233
`patent in light of the Federal Circuit’s affirmance, and (3) enter final judgment of
`invalidity on the ’007 and ’377 patents. I’ve attached the draft motion and proposed
`orders. Please let us know if Fitbit is willing to join the motion (it is currently stylized
`as a joint motion) or if not, whether Fitbit would oppose the motion. I’m happy to
`hop on a phone call to discuss either today or tomorrow if you have any questions.
`
`Best,
`
`John Custer
`Foley & Lardner LLP
`111 Huntington Avenue | Suite 2500
`Boston, MA 02199-4001
`P 617.226.3148
`Pronouns: He/Him/His
`
`
`
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`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 9 of 10
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`Case 1:19-cv-11586-FDS Document 421-1 Filed 09/25/23 Page 10 of 10
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