Case 1:19 cv 11586 IT Document 56 Filed 03/29/20 Page 1 of 39
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` UNITED STATES DISTRICT COURT
` DISTRICT OF MASSACHUSETTS
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`CA No. 19-11586-IT
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`)))))))))
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`PHILIPS NORTH AMERICA LLC,
`Plaintiff,
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`vs.
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`FITBIT, INC.,
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`Defendant.
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`BEFORE: THE HONORABLE INDIRA TALWANI
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`SCHEDULING CONFERENCE VIA TELECONFERENCE
`
`John Joseph Moakley United States Courthouse
`Courtroom No. 9
`One Courthouse Way
`Boston, MA 02210
`Tuesday, March 24, 2020
`2:30 p.m.
`
`Cheryl Dahlstrom, RMR, CRR
`Official Court Reporter
`John Joseph Moakley United States Courthouse
`One Courthouse Way, Room 3510
`Boston, MA 02210
`Mechanical Steno - Transcript by Computer
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1063 Page 0001
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`1
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` UNITED STATES DISTRICT COURT
` DISTRICT OF MASSACHUSETTS
`
`CA No. 19-11586-IT
`
`)))))))))
`
`PHILIPS NORTH AMERICA LLC,
`Plaintiff,
`
`vs.
`
`FITBIT, INC.,
`
`Defendant.
`
`BEFORE: THE HONORABLE INDIRA TALWANI
`
`SCHEDULING CONFERENCE VIA TELECONFERENCE
`
`John Joseph Moakley United States Courthouse
`Courtroom No. 9
`One Courthouse Way
`Boston, MA 02210
`Tuesday, March 24, 2020
`2:30 p.m.
`
`Cheryl Dahlstrom, RMR, CRR
`Official Court Reporter
`John Joseph Moakley United States Courthouse
`One Courthouse Way, Room 3510
`Boston, MA 02210
`Mechanical Steno - Transcript by Computer
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1063 Page 0001
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`Case 1:19 cv 11586 IT Document 56 Filed 03/29/20 Page 2 of 39
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`APPEARANCES:
`ON BEHALF OF THE PLAINTIFF:
`FOLEY & LARDNER LLP
`By: Ruben J. Rodrigues, Esq.
`111 Huntington Avenue
`Boston, Massachusetts 02199
`FOLEY & LARDNER LLP
`By: Eley O. Thompson, Esq.
`321 North Clark Street
`Chicago, Illinois 60654
`Also Present: Elias Schilowitz, Esq.
`
`ON BEHALF OF THE DEFENDANT:
`GOULSTON & STORRS
`By: Jennifer B. Furey, Esq.
`400 Atlantic Avenue
`Boston, Massachusetts 02110
`PAUL HASTINGS LLP
`By: Yar R. Chaikovsky, Esq.
` David Beckwith, Esq.
`1117 S. California Avenue
`Palo Alto, California 94304
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1063 Page 0002
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`Case 1:19 cv 11586 IT Document 56 Filed 03/29/20 Page 3 of 39
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`P R O C E E D I N G S
`THE CLERK: If we could start please with Philips
`North America counsel.
`MR. THOMPSON: Yes, thank you. This is Eley Thompson,
`of Foley & Lardner, on behalf of Philips. Also with me is
`Ruben Rodrigues of Foley & Lardner in Boston; and then in-house
`counsel for Philips may be joining. I'm not sure if they've
`dialed in yet. That would be Elias Schilowitz. I can spell
`that if you would like.
`THE CLERK: I would very much like.
`MR. THOMPSON: Okay. Elias is E-l-i-a-s, and
`Schilowitz is S-c-h-i-l-o-w-i-t-z.
`THE CLERK: Okay. Now, Mr. Schilowitz does not appear
`as counsel on the docket. Do you know if he will be entering
`an appearance?
`MR. THOMPSON: He's going to be observing right now.
`THE COURT: Okay. If -- he won't be speaking, is that
`correct?
`MR. THOMPSON: Yeah. He won't be speaking. I thought
`that I would mention that so that you knew that there was an
`additional person.
`THE CLERK: I appreciate that, Counsel.
`Will Lucas Silva be joining us?
`MR. THOMPSON: He will not be.
`THE CLERK: Okay. Go ahead.
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1063 Page 0003
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`MR. THOMPSON: That's it for Philips.
`THE CLERK: Okay. Thank you very much.
`Hi. It's Gail Marchione I'm judge's courtroom deputy.
`We have counsel on the line for Philips North America. I've
`taken their names: Mr. Thompson and Mr. Rodrigues. Will
`Fitbit counsel please identify themselves for the record.
`MR. CHAIKOVSKY: Hi. This is Yar Chaikovsky, from
`Paul Hastings, on behalf of Fitbit.
`THE CLERK: Thank you.
`MR. CHAIKOVSKY: We may have others on the line; and
`if they are, they will announce themselves. I think we have
`David Beckwith also on the line, but he can confirm.
`MR. BECKWITH: Yes. This is David Beckwith. I'm also
`on the line.
`THE CLERK: Thank you. Anyone else?
`MS. FUREY: Yes. This is Jennifer Furey, from
`Goulston & Storrs.
`THE CLERK: Okay. Thank you. Anyone else?
`MR. SCHILOWITZ: Yeah. It's Elias Schilowitz, counsel
`from Philips.
`MR. THOMPSON: I told them.
`THE CLERK: Thank you. Anyone else for Fitbit?
`Do we expect anyone else to call in later from Fitbit,
`or do you think we can go ahead now with the judge?
`MR. CHAIKOVSKY: No. I think that's everyone that's
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1063 Page 0004
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`going to call in so we can proceed.
`THE CLERK: I have Mr. Beckwith, Ms. Furey, and Mr.
`Chaikovsky, correct?
`MR. CHAIKOVSKY: Correct.
`THE CLERK: I can't really mute anyone. If you could
`give me a second, I'm going to send the judge an email and let
`her know that we're ready.
`Judge Talwani?
`MR. RODRIGUES: No. This is Ruben Rodrigues of Foley
`& Lardner.
`THE CLERK: Okay. Ruben Rodrigues?
`MR. RODRIGUES: That is correct.
`THE CLERK: Okay, good. Thank you.
`The next beep should be the judge.
`MR. RODRIGUES: I don't know if others have a similar
`problem, but I had to dial in a few times because I was
`getting --
`THE CLERK: I think we have everyone on the line now.
`MR. RODRIGUES: Okay.
`THE CLERK: Unless we've lost everyone. Do we still
`have people on the line? You can all sing out.
`I'm going to say this on the record when the judge
`comes on. But every single time you speak, if you could please
`state your name just to make it easier for our court reporter.
`THE COURT: Good afternoon.
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`Fitbit, Inc. v. Philips North America LLC
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`Fitbit, Inc. Ex. 1063 Page 0005
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`THE CLERK: Good afternoon, Judge Talwani. I'm going
`to call the case for the record, okay?
`THE COURT: Thank you.
`THE CLERK: Thank you. United States District Court
`is now in session. The Honorable Judge Indira Talwani
`presiding. This is Case No. 19-cv-11586, Philips North
`America, LLC v. Fitbit, Inc. The parties have previously
`identified themselves for the record and are instructed to
`state their full name each time they speak in order to keep an
`accurate record.
`THE COURT: So good afternoon.
`ALL: Good afternoon, your Honor.
`THE COURT: I'm going to try and work our way through
`a few things on this status conference -- or scheduling
`conference. So I'll go through my list; and when we're done,
`if you have other matters, you're welcome to raise them.
`I do want to start just with some concern about how
`today's conference was handled by counsel. We are all under
`pressure with the pandemic here. Not least among the groups
`under pressure are the courts. And we are trying to ensure
`that what may be a long haul here that people are able to have
`a judicial system that is functioning.
`You had an obligation here, in advance of this
`conference, to give me a status report. Maybe that wasn't that
`clear, my expectation. So a week ago, or perhaps more than a
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`week ago, we -- I put an order on the docket, March 18, asking
`that you confer and promptly file an updated joint statement.
`I have a hard time understanding how it came to be
`that I didn't get a joint statement from you until a second
`request from my clerk and that it was then filed after close of
`our business day on Friday. So I can -- looks from the record
`that Philips made some effort. So perhaps this is directed at
`Fitbit.
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`MR. CHAIKOVSKY: Okay. Your Honor, Yar Chaikovsky on
`behalf of Fitbit.
`At least as I am aware -- and we have a lot of people
`on the phone -- I guess I would respectfully disagree with
`respect to the effort. We received the document Thursday
`morning, last Thursday. Perhaps, you know, I would suggest --
`THE COURT: I'm sorry. You received what document
`last Thursday morning?
`MR. CHAIKOVSKY: The draft of the joint statement,
`Thursday morning.
`THE COURT: So my order was March 18, which was
`Wednesday. So now proceed.
`MR. CHAIKOVSKY: Right. And so last Thursday -- now,
`I will take personal responsibility on behalf of Fitbit that,
`you know, as defendants, we perhaps could have, you know,
`gotten it out sooner, your Honor, given your order on the 18th
`-- I think you said your order was on the 18th. But we
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`received it Thursday, on the 19th. After getting it on the
`19th, we worked on it. Now, we could have worked on it more
`expeditiously, but we got it out on the 20th, in the morning of
`the 20th.
`THE COURT: And instead of working on it, you were
`finalizing your motion for summary judgment. I just don't --
`I'm flabbergasted as to what made you think that motion, which
`had no due date, should come in front of my court order when I
`am trying to juggle many people's schedules. There are many
`flights. There's many people. We have a court personnel
`trying to set this thing up, and why you didn't think that my
`order was of higher priority than getting the motion for
`summary judgment filed.
`MR. CHAIKOVSKY: Again, all I can do is apologize,
`your Honor. You know, our team was working on it; and as far
`as I know, we worked on it diligently. It's not like we have
`people that can't work on two different things at once. And we
`turned around what is obviously, as you can see by the report,
`not necessarily a short report, expeditiously. Perhaps it
`could have been done faster. Again, all I can do is apologize
`to the Court, and we will not do it again.
`THE COURT: That's what I need to hear. We are all in
`a difficult world going forward. I understand that, when I'm
`getting requests of how it's been difficult to take people's
`depositions or how civil juries and criminal juries have been
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`canceled and how we're trying to sentence criminal defendants
`when we can't transport them. All of these issues are issues
`that we're all dealing with. And it's tough and I'm trying to
`be considerate for what the parties needed. We're here
`telephonically. We're not here in person.
`But there is no way that the judicial system is going
`to function if lawyers don't have, as you're going through your
`checklist, No. 1, how are we going to make this work for the
`courts. You may think that you are strapped with your
`resources and your having to stay in your homes and not commute
`to the courts -- to your offices. It is no different for
`anyone. And if you want a judicial system that's working, I
`just have to tell you there is no excuse for not putting what
`the judges are asking you to do to try to make this work --
`putting that front burner.
`I needed to figure out if we needed to have this
`conference, if we needed to have it in person. And to not give
`me the courtesy of doing that before close of business on
`Friday night, it's just -- you know, I entered the order myself
`on Saturday morning so people didn't have to make travel
`arrangements. But I shouldn't be in that position. So it's
`not going to happen again. Understood?
`MR. CHAIKOVSKY: Definitely apologies from the Fitbit
`perspective, your Honor.
`THE COURT: Okay. So that was Item 1 on my agenda.
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`Item 2 is to talk about the discovery so far.
`Please identify yourself.
`MR. THOMPSON: This is Eley Thompson - my apologies --
`for plaintiff, Philips.
`I could give you a summary of what the parties have
`been doing since our December scheduling conference if that
`would be helpful to your Honor.
`THE COURT: Yes. Well, let me ask the question this
`way: The proposed dates that you had come in with at the last
`scheduling conference and that I adopted had your initial
`disclosures for Rule 26 due January 10th. Did those goes out?
`MR. THOMPSON: Yes. The parties exchanged all of
`that, all of those items, and did even more per what I think
`the parties understood was the desire of the court, including
`exchanging interrogatories and requests for productions, and
`that's what I was going to summarize for you.
`THE COURT: Okay. I just -- the reason I was just
`checking first, and I would like to hear from the rest of them.
`But the reason I was checking first on the initial disclosures
`is that you have so much patent-specific disclosures worked
`into the rules and so on that sometimes people forget about the
`initial disclosures and seeing in the papers that there seems
`to be a dispute about who goes first and what information comes
`forward. Just to be clear, that the initial disclosures under
`Rule 26 are your witnesses and documents to support your claims
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`or defenses. I want to make sure those happened.
`Have we lost everybody?
`MR. CHAIKOVSKY: No. Yar Chaikovsky for Fitbit is
`still here.
`MR. THOMPSON: Your Honor, Eley Thompson for Philips.
`I dropped off, and I don't know for kind of how long. So kind
`of right after I spoke, I think I -- at least my connection --
`I don't know about other people's -- was dropped.
`THE COURT: Okay. So to the extent that people are on
`lines that are on speaker phones -- hello? Have we lost
`everybody?
`MR. THOMPSON: I am here. This is Eley Thompson.
`THE COURT: I'm going to assume we're still on and
`keep going.
`My question I had asked was whether -- and just to
`double-check that I'm not talking about just the specific Rule
`16.6(d) disclosures, but I'm also talking about the general
`Rule 26(a) initial disclosures, i.e., your witnesses and
`documents that support your claims or defenses. Have those
`been disclosed?
`You have to -- right. Every time you speak, you have
`to identify yourself or we won't have a record here.
`MR. THOMPSON: Yes, your Honor. My apologies. It's
`Eley Thompson.
`And I believe the answer to that question is yes.
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`It's certainly true as to the items that were on the schedule,
`and Rubin Rodrigues can also confirm that.
`THE COURT: Can't hear you.
`MR. RODRIGUES: This is Ruben Rodriguez, of Foley, on
`behalf of Philips.
`I can confirm that Philips served initial disclosures.
`I believe Fitbit did as well, but I'm double-checking that.
`THE COURT: For Fitbit, did you serve initial
`disclosures?
`MR. CHAIKOVSKY: Yes, your Honor. We served initial
`disclosures for Fitbit. This is Yar Chaikovsky, apologies.
`Served initial disclosures and also served the patent
`local rule disclosures.
`THE COURT: Okay. So is there -- all of that should
`have happened before today. So have all the disclosures
`happened that are required under Rule 16.6(d)?
`MR. THOMPSON: Your Honor, Eley Thompson on behalf of
`Philips.
`I do believe that we have made our disclosures.
`THE COURT: And for Fitbit?
`MR. CHAIKOVSKY: Your Honor, Yar Chaikovsky on behalf
`of Fitbit.
`Although I guess I could be corrected by my colleague,
`David Beckwith, if I'm incorrect, but I believe we have made
`all the requisite disclosures that are required by your Court
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`pursuant to our last joint status conference, which was to
`respond to discovery but not produce documents, et cetera.
`THE COURT: Okay. But I'm trying to divide this up
`between a couple different things. I put no stay whatsoever or
`limitation whatsoever on either the initial disclosures under
`Rule 26 or the Rule 16.6 disclosures. So I just want to make
`sure those have happened before we get to the discovery that
`was served.
`Wait. This is who?
`MR. CHAIKOVSKY: This is Yar Chaikovsky for Fitbit. I
`apologize.
`We produced all our disclosures, you know, under the
`rule. To the extent there's any documents required under the
`rule, our interpretation was, given your order at the last
`status conference, we didn't produce technical documents
`because that was our understanding based on the prior hearing
`that I kind of would kind of avert that kind of notion of not
`producing documents or respond to requests for production, et
`cetera.
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`So disclosures are there. Kind of the patent
`mechanics disclosures are all there, all produced. But if
`there are any necessary documents required -- technical
`documents required to be produced, those are not produced.
`THE COURT: So I didn't do a written order. We just
`spent what I said. So there may have been a misunderstanding.
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`But here was my intention: One, there wasn't -- I
`didn't see there being an argument about initial disclosures,
`and I intended for you to do initial disclosures. Two,
`defendant asked me to stay discovery because they were -- had a
`pending motion to dismiss that was going to be refiled with the
`amended complaint.
`And what I said was not, I agree with you that the
`motion to stay should be granted. What I said was, I hate to
`delay things. I understand that we don't want to have
`unnecessary costs, but I don't know when I'm going to get to
`your motion to dismiss. I will do my best I can. I'm going to
`try something new here, which is that I'm going to have you
`serve your discovery, file your objections to discovery, serve
`your responses. And then we can have a focused scheduling
`conference about what is at issue. I don't think that anybody
`raised to me there that you wouldn't get your documents that
`would go with your initial disclosures. So I think we need to
`get those out.
`MR. THOMPSON: Your Honor, Eley Thompson on behalf of
`Philips. That's exactly what we were going to suggest because,
`in addition to those disclosures and not receiving the
`technical documents from the defendants, there were, you know,
`67 requests for productions that Philips had served on Fitbit
`and eight interrogatories. And all of that --
`THE COURT: You're fading off.
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`MR. THOMPSON: Excuse me, your Honor.
`And the information -- I think that as counsel for
`Fitbit indicated, that information that is responsive to the
`document request and that sort of stuff that you would normally
`expect as being kind of the beginning of discovery has not been
`exchanged. Only some public documents have been provided by
`Fitbit.
`
`I will say that Philips has produced public documents
`and some additional, I'll say, company-type documents. But all
`of this is -- we were going to suggest that it would be a good
`time for the parties to start exchanging.
`And I'll note just one other thing since I'm kind of
`talking about the status, that Fitbit has subpoenaed five
`third-party entities for documents and depositions. MIT was
`one; HP Labs; and some others. And they also have not
`subpoenaed the inventors, the four inventors, relative to
`conception and reduction to practice.
`So from Philips' perspective, what we should do, given
`the -- you know, where we'll have challenges, we will address
`them as we go, but the parties' accumulated documents, that we
`can exchange those and start reviewing them. And that's why we
`suggested that --
`THE COURT: Any response?
`MR. BECKWITH: Your Honor, this is David Beckwith. I
`understand Mr. Chaikovsky was just cut off.
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`02:48
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`02:49
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1063 Page 0015
`
`
`
`Case 1:19 cv 11586 IT Document 56 Filed 03/29/20 Page 16 of 39
`
`16
`
`In connection with the request -- I understand that
`the Court is saying is, for purposes of responding to the
`patent local rule disclosure, that the Court wants to get that
`information out. In connection with the Philips' counsel's
`comment about providing documents in response to requests for
`production, I think that it's more accurate to say neither
`party has produced any significant documents in response to the
`request for production.
`In connection with the subpoenas, the subpoenas were
`sent, but there have been no documents that have been produced
`pursuant to any of those subpoenas.
`And with respect to the discovery directed to the
`inventors, I think that was a separate topic that the Court may
`wish to address. But that was --
`THE COURT: So let's take this in pieces so we're not
`here all afternoon.
`Number 1, I tried to accommodate Fitbit's request by
`putting into place what I thought would be a way to tee up the
`legal issues by today. I failed. You guys haven't gotten
`those disclosures. That may be my not having put that out
`clearly. You also don't have teed up for me the legal issues
`to make decisions about what we do need and don't need going
`forward. And, further, I'm having cited back at me that I
`granted a motion to stay because I found that was the right
`thing to do on a discovery motion. I make no such finding.
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`02:51
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1063 Page 0016
`
`
`
`Case 1:19 cv 11586 IT Document 56 Filed 03/29/20 Page 17 of 39
`
`17
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`So we are back to just putting discovery in place. I
`am still committed to trying to get to that discovery motion as
`soon as I can. The less I have to deal with, you know, the
`silly things to be wasting my time, like, tracking people down
`on whether they filed a joint status report or not, the more I
`can put my attention to getting the substantive motion done. I
`will do that. I will do the best I can. In the meantime, we
`need the full compliance of the local rules, and we need to
`start getting responses to discovery.
`I don't, frankly -- I understood -- I am sympathetic
`to a defendant being hit with a lawsuit that they think there's
`no legal claim for and to be asked to do expensive discovery
`when it maybe should go on a 12(b)(6). I'm very sympathetic to
`that. I don't think that's what's happening here. The notion
`that I have the summary judgment motion served and that you're
`serving subpoenas and you're doing these other things, I just
`-- we're not going to do this litigation by playing games. So
`we are on full course ahead. I will get to the motion to
`dismiss as soon as I can.
`And now let's talk about the deadlines. Sounds like
`we need a new deadline for you to fulfill your -- on both
`sides, your initial disclosures. So how soon can we get all of
`the documents with the initial disclosures out?
`MR. CHAIKOVSKY: Your Honor, Yar Chaikovsky for
`
`Fitbit.
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`02:52
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1063 Page 0017
`
`
`
`Case 1:19 cv 11586 IT Document 56 Filed 03/29/20 Page 18 of 39
`
`18
`
`I think we can do it in approximately three weeks.
`THE COURT: Okay. Let's do that. We have -- in 21
`days, I expect all of the initial disclosures that were
`supposed to have been done by March 13 will be completed.
`Now, there was originally a proposed date for motions
`to amend of March 24th. Any disagreement with that being the
`date?
`
`MR. THOMPSON: Your Honor, Eley Thompson for Philips.
`Yes, that's fine from our perspective.
`THE COURT: Any disagreement from Fitbit?
`MR. CHAIKOVSKY: Yar Chaikovsky.
`No disagreement, your Honor.
`THE COURT: Okay. And then with regard to the rest of
`the dates here, I have four dates -- four sets of dates in
`front of me because I'm looking at the original proposed
`schedule that you gave me and the schedule that you've given me
`now. And the difference -- Philips did not just give the same
`dates as before. They've moved them out by about a month. And
`Fitbit didn't give me the same dates that they had proposed
`before, but they've moved them out by months.
`MR. THOMPSON: Your Honor, Eley Thompson for Philips.
`Just to explain why we moved them out, it was because
`of the way that it happened in the time period between December
`and today, that the -- you know, the documents were not
`provided. So we thought that, to have things move smoothly,
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`02:54
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`02:54
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1063 Page 0018
`
`
`
`Case 1:19 cv 11586 IT Document 56 Filed 03/29/20 Page 19 of 39
`
`19
`
`maybe the way to do it was to extend those first dates,
`relative to claim construction, by a month and then hold to the
`overall schedule because this doesn't have proposed close of
`fact discovery until the fall.
`THE COURT: Is everyone still on?
`MR. THOMPSON: Your Honor, Eley Thompson. I'm still
`here. If I cut out, I'll just repeat the last couple things I
`said, was that we had extended it by 30 days to accommodate the
`lack of documents. And then the fact discovery, we propose,
`would be not -- wouldn't close until the fall. So there would
`be plenty of flexibility in that schedule.
`THE COURT: Now that I'm putting the initial
`disclosures' final date to April 14, which is 21 days, I think
`it would make sense to push these other dates out as well
`because you don't want to be doing your exchange of claim terms
`before the disclosures.
`So I think what I'm going to do here is I'm taking
`Philips' dates and adding 21 days to them all.
`MR. THOMPSON: Eley Thompson.
`Thank you, your Honor. That would be fine from our
`perspective.
`THE COURT: Okay. Now, in the event that we stumble
`on depositions, obviously, we are in a difficult situation. So
`if it looks like we're going to need depositions for claim
`construction, which I don't know that we would, but if we are
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`02:56
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`02:56
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1063 Page 0019
`
`
`
`Case 1:19 cv 11586 IT Document 56 Filed 03/29/20 Page 20 of 39
`
`20
`
`going to need it and we need to do anything special to
`accommodate that, I am directing you to meet and confer with
`each other, see if you can figure out a way to do it.
`Videoconferencing is a way to get outside but -- and then make
`a joint proposal to me of how you want to handle those. So I'm
`going to take these dates.
`Now let's talk about this summary judgment motion.
`MR. THOMPSON: Your Honor, Eley Thompson on behalf of
`Philips.
`Our view -- and I hope it was clear enough in the
`joint submission. Philips' view is that this is normally a
`topic that is handled in claim construction. It certainly has
`claim construction aspects. So we would propose that it be
`entered and then held for a scheduling of the briefing until
`after we take care of the claim construction, which is in our
`schedule, because, most likely, this will all be resolved in
`that context and is more efficient.
`THE COURT: What's the response from Fitbit?
`MR. CHAIKOVSKY: Your Honor, Yar Chaikovsky.
`I just wanted to paint a bright context of the summary
`judgment motion because -- I apologize. Actually, we had a --
`Judge Gilstrap actually had a Markman hearing in Marshall,
`Texas, on Wednesday, last Wednesday, that I got back late from.
`So perhaps some of this wasn't communicated, understanding you
`put the report on our problem. But I apologize. I got back
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`02:58
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1063 Page 0020
`
`
`
`Case 1:19 cv 11586 IT Document 56 Filed 03/29/20 Page 21 of 39
`
`21
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`midnight on Wednesday. So I was still traveling last week.
`Obviously, we think the 101 motions -- and I
`understand your Court's position are kind of -- we think
`there's a dispositive issue. We then are preparing IPRs, which
`we made very clear to Philips that we're preparing IPRs. In
`the process of preparing those IPRs, which are on all of the
`patents asserted, which -- to get filed by the end -- you know,
`this month, maybe beginning of April. That case, the Samsung
`case, which basically said, you know, with respect to
`indefiniteness, we can't go before the PTAB and file a summary
`-- you know, an IPR if there's a claim term that we believe is
`indefinite. That's why we had the summary judgment motion. We
`have IPR bar dates, basically, whenever there are complaints,
`beginning of July. We have an IPR bar date one year from the
`filing in which we have to file the IPRs.
`The reason the summary judgment was filed, not because
`we don't -- we really wouldn't have wanted to file it,
`effectively, is what I'm saying. Our focus is on the 101. Our
`focus is we believe these things are all invalid under 101.
`But because we have to file IPRs -- and we're filing IPRs in
`all of the patents-in-suit, we could not file them on the '007
`believing this one means-plus-function term to be indefinite.
`And we need guidance one way or the other. To be honest, if
`it's not indefinite, then we'll file the IPR; it's not
`indefinite. And we can go and say it's construed a certain
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`02:59
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`03:00
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1063 Page 0021
`
`
`
`Case 1:19 cv 11586 IT Document 56 Filed 03/29/20 Page 22 of 39
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`way.
`
`It's a targeted issue that other courts do, for
`example, the District of Delaware, Northern District of
`California or East Texas, with respect to one issue, a
`means-plus-function issue. And it really relates to a matter
`that needs to be decided before July, the one year from the
`filing of the complaint so that we can -- if it's not
`indefinite, we file an IPR. If it is indefinite, well, then,
`it's been disposed of through indefiniteness.
`And, ergo, why Fitbit was actually working on that --
`and I apologize -- so quickly, because it's impacting our bar
`date that is coming up. Otherwise, again, it's not a motion we
`would have brought independently. It's not a motion we were --
`because, again, we were focused on the 101 aspects, not these
`claim construction issues, but because we can't file these
`IPRs, even though we've prepared one on the '007 patent, we
`needed to seek, you know, a resolution of this because Philips,
`meaning Philips, the Federal Circuit case, for claim
`construction is applied both now at the PTAB and before your
`Honor in district court. And so we can't take disparate views.
`I know some people that may. But we can't take disparate views
`of the claims before the PTAB and before your Honor, and that's
`how that motion came to be and why that motion is different
`than other claim construction issues and is an isolated issue
`really focusing on one term and one term only.
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`03:00
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`03:01
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1063 Page 0022
`
`
`
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