1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`CA No. 19-11586-IT
`Pages 1 - 30
`
`)))))))))
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`PHILIPS NORTH AMERICA LLC,
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`Plaintiff
`
`-VS-
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`FITBIT, INC.,
`
`Defendant
`
`SCHEDULING CONFERENCE
`
`BEFORE THE HONORABLE INDIRA TALWANI
`UNITED STATES DISTRICT JUDGE
`
`
`
`
`United States District Court
`1 Courthouse Way, Courtroom 9
`Boston, Massachusetts 02210
`December 2, 2019, 2:28 p.m.
`
`
`
`LEE A. MARZILLI
`OFFICIAL COURT REPORTER
`United States District Court
`1 Courthouse Way, Room 7200
`Boston, MA 02210
`(617)345-6787
`
`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1062 Page 0001
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`CA No. 19-11586-IT
`Pages 1 - 30
`
`)))))))))
`
`PHILIPS NORTH AMERICA LLC,
`
`Plaintiff
`
`-VS-
`
`FITBIT, INC.,
`
`Defendant
`
`SCHEDULING CONFERENCE
`
`BEFORE THE HONORABLE INDIRA TALWANI
`UNITED STATES DISTRICT JUDGE
`
`
`
`
`United States District Court
`1 Courthouse Way, Courtroom 9
`Boston, Massachusetts 02210
`December 2, 2019, 2:28 p.m.
`
`
`
`LEE A. MARZILLI
`OFFICIAL COURT REPORTER
`United States District Court
`1 Courthouse Way, Room 7200
`Boston, MA 02210
`(617)345-6787
`
`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1062 Page 0001
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`A P P E A R A N C E S:
`
`ELEY O. THOMPSON, ESQ. and LUCAS L. SILVA, ESQ.,
`Foley & Lardner LLP, 111 Huntington Avenue, Suite 2500,
`Boston, Massachusetts, 02199, for the Plaintiff.
`
`JENNIFER B. FUREY, ESQ., Goulston & Storrs,
`400 Atlantic Avenue, Boston, Massachusetts, 02110, for
`the Defendant.
`
`YAR R. CHAIKOVSKY, ESQ., Paul Hastings LLP,
`1117 S. California Avenue, Palo Alto, California, 94304,
`for the Defendant.
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0002
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`3
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`P R O C E E D I N G S
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`THE CLERK: U.S. District Court is back in
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`session. This is Case No. 19-CV-11586, Philips North
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`America, LLC v. Fitbit, Inc. Will counsel please identify
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`themselves for the record.
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`MR. THOMPSON: Your Honor, Eley Thompson on behalf
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`of Philips North America, Foley & Lardner.
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`THE COURT: Good afternoon.
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`MR. SILVA: Good afternoon, your Honor. Luke
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`Silva, also on behalf of Philips.
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`THE COURT: Good afternoon.
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`MR. CHAIKOVSKY: Good afternoon, your Honor. Yar
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`Chaikovsky on behalf of Fitbit.
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`MS. FUREY: And good afternoon, your Honor.
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`Jennifer Furey, Goulston & Storrs, also on behalf of Fitbit.
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`THE COURT: Good afternoon. So I think this was
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`billed as a scheduling conference. We had the original
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`complaint. There was a motion to dismiss. I now have the
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`First Amended Complaint, so the motion to dismiss that's on
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`the docket is denied as moot. That's No. 19.
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`So I understood from your report that you're
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`anticipating reviewing that and deciding whether or not to
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`file a new motion to dismiss. Is that correct?
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`MR. CHAIKOVSKY: Yes, your Honor. In fact, we
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`have reviewed it. We will be filing a new motion to
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`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0003
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`4
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`dismiss. Obviously under the rules we have 14 days. I believe
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`we filed it either last Tuesday or Wednesday. We will get it
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`filed on time. We don't think anything that was added changes
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`the course with respect to the four patents being ineligible
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`under 101.
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`THE COURT: Okay. So as I'm sure you know, since
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`you've gone through what I've done on other cases, I recognize
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`that a motion to dismiss can be granted even where there are
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`disputed claim terms; but if you are going to brief this,
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`recognize that this isn't an opportunity for claim construction.
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`This is accepting their claim construction, not whether you
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`agree with it or don't agree with it. Otherwise it's really
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`not worth your time or mine.
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`MR. CHAIKOVSKY: Yes, your Honor, we understand that.
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`In fact, I think we would be very happy to accept their claim
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`constructions. Their claim constructions would be broader
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`constructions to Wisconsin infringement concerns and under
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`those broader constructions that Philips has, in all
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`likelihood. But even if you accept it narrower, the claim
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`constructions are irrelevant. With the law as it is and with
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`the case law from the Federal Circuit, Cleveland Clinic and
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`others in a post-Aatrix/Berkheimer world, these patents, these
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`specifications admit that everything is conventional and well
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`known and generic. There's nothing we've done in their
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`complaint that changes that. In fact, you can look at the
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0004
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`5
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`Cellspin case that they cite which involved Fitbit, and that
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`case itself states that it doesn't change the fact, if the
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`patent itself admits these things are known conventionally, you
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`can't change that fact. You can't say the sky is red and
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`accept that as true. And here we just have basically the
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`plaintiff actually making allegations that are divorced from
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`the claims, and the claims themselves are ineligible. So we
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`will be refiling, and the constructions themselves can be as
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`Philips posits them to be.
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`THE COURT: Okay. I do take these pretrial motions
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`seriously, and I understand that or it is my view that properly
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`litigated, everybody benefits from teeing up legal issues when
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`legal issues can be teed up before you spend a lot of money on
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`nonlegal issues when that's appropriate. What I find
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`cumbersome is that I am now, I think -- I don't think my
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`circumstances here are unusual, but I do think that it is every
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`single case in front of every single defendant now gets a
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`motion to dismiss, and so there are different techniques for
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`dealing with it. I think some judges are just saying, "Okay,
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`we're going to ignore it." Some people are saying, "Let's
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`grant it." But if it's going to be done properly, if it's
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`granted too soon, you get reversed on appeal. If it's brought
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`too soon, you're wasting my time. So if it is the right time
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`to bring it, feel free and bring it. I will give it good
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`consideration. But please recognize that there's no shortcut
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`Fitbit, Inc. Ex. 1062 Page 0005
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`6
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`in -- if there is a dispute here, it can't be framed in a
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`motion to dismiss. So I just -- I haven't dug any deeper than
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`that, and I don't mean to suggest that I have. I haven't.
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`This is really sort of an across-the-board thing, but you will
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`make everybody's time more useful here if this is a description
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`of the facts that the plaintiffs could embrace.
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`MR. CHAIKOVSKY: Understood. And, your Honor, I'm
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`cognizant of your time, cognizant of the Federal Circuit's time
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`if this were to go up on appeal, having had a few 101 issues go
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`up there, so we are not looking to file any kind of motion that
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`we don't believe has a chance of success on this. We think
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`this deserves a pretty significant look, and we think we're
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`definitely within the -- correct on these patents.
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`THE COURT: And I guess what I'm trying to say to you
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`is, I will dig in deeply on the law, but sometimes it's heavy
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`lifting to try to figure out the facts; and if it's too heavy
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`lifting, we don't get there, so don't complicate it. Let's
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`start with -- if you think that this is a straightforward case
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`where this is a 101 defense and you're going to be there,
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`that's fine. If you have to do somersaults to get there by
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`what's different in the complaint versus in the prosecution
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`history, it becomes difficult, both for me, and, frankly, if I
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`allow it, it's risky up at the Federal Circuit, so --
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`MR. CHAIKOVSKY: I think, your Honor, you will see we
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`have Cleveland Clinic here. We have the admissions that
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`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0006
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`7
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`everything in here is conventional. Within this patent, if you
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`line it up, these are all conventional items with an abstract
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`motion, so we'll make it very easy for you, I promise.
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`THE COURT: Okay.
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`MR. THOMPSON: And I will just note, your Honor, it
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`was exactly what you suggested that led us to agree to amend
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`the complaint when they suggested it. I mean, we told them
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`actually before they filed that we would consider amending. It
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`now has over 50 paragraphs, over 20 pages addressing 101 to
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`make sure that it was clear under Iqbal/Twombly.
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`So we'll address their motion when it comes, but I
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`agree with the Court's suggestion that it's very unlikely that
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`they will be able to accept the facts as pled and be able to
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`show the necessary parts to establish their -- of course they
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`bear the burden of proof by clear and convincing evidence on
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`this affirmative defense -- that they would be able to succeed
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`at the pleadings stage.
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`I will say that the parties did address the schedule,
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`that other than those suggestions, they would like everything
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`stayed in light of the motion that I guess now we'll file.
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`Other than that, I mean, I think we have a schedule, and
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`there's a few issues that we identified that the Court may want
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`to address in setting that schedule.
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`THE COURT: Yes, I'm happy to go through those. I
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`guess one of the first questions is the question about
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`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0007
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`8
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`mediation, and it sounds like the parties have already
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`exhausted that? Is that correct? Or do you have an interest
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`in a referral to a magistrate judge for a mediation?
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`MR. THOMPSON: Your Honor, the parties have engaged
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`former Judge Hochberg from New Jersey, and I believe that
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`there's been communications even recently. Of course, the
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`parties have been working on this since 2016, so they have been
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`working together. They haven't found resolution. That's what
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`brought us here today, but the parties do seem to have an open
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`dialogue to try to find resolution.
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`THE COURT: Okay. And have the parties, in going
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`through the proposed schedule, have the parties talked about
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`whether -- and it's not so much the question of should we
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`bifurcate or what should we bifurcate, but to sort of talk
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`about where really the disputes, where there are disputes, that
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`would make a difference before each of you runs up your
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`client's entire litigation budget.
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`MR. THOMPSON: I will say that from the plaintiff's
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`perspective, one thing that you may have gleaned from the
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`submissions, because there were a number of submissions that
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`were essentially Fitbit, you know, speaking to the Court
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`writing there, what you didn't see is Fitbit say that the
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`elements of the claims are not practiced by Fitbit and its
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`customers. So this in our view, from the plaintiff's
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`standpoint, is a case where there's infringement. This is
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`Fitbit, Inc. Ex. 1062 Page 0008
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`9
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`where it started in 2016 and working, so a few things that have
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`been important along that process that have not occurred. One
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`is to have an identification exploration of damages, and then
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`of course secondly is to get a claim construction in place, and
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`you'll note from the proposed schedule that's one of the
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`differences is when that claim construction Markman hearing
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`should happen. We think that it's perhaps the tension between
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`infringement and validity that leads them to want such an
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`extension well past what the court usually has in its local
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`rules, perhaps for IPRs that they didn't mention, but I don't
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`know. So we would suggest, the plaintiffs, that we move
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`forward with the discovery process because we think the
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`combination of addressing these issues and having this open
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`exchange of information will help the parties come together,
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`perhaps through Judge Hochberg or in this court, to find a
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`resolution.
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`THE COURT: So I'm not sure I followed your reasoning
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`for -- I think your starting premise was that really, there's
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`little issue about actual infringement, so let's jump to
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`damages. But isn't the flip side of that, there's little issue
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`about actual infringement, so the ball game is validity or
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`invalidity?
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`MR. THOMPSON: I think that that's the only defenses
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`that they have, and, of course, you saw their first attempt at
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`that with the motion and then the amended complaint. So, yes,
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`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0009
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`10
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`I think that's true. I mean, if you don't have a
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`noninfringement position, where you go as a defendant is very
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`common, right, is you try to establish --
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`THE COURT: Well, common or not, I -- I do better
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`without a lot of adjectives. I sort of try to get to the meat
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`of it. So common or not, the issue here, the issue that is
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`blocking resolution of this is an argument that your -- it
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`isn't an argument that maybe we didn't infringe that much or
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`it's only this issue. It's that your patents aren't valid at
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`all. That's their argument, which means why are we going to
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`damages? Why not hold off on this until I get this first issue
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`dealt with? And if the issue isn't appropriate for a motion to
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`dismiss, is there a way to tee it up as a legal issue before
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`spending all the money on doing damage discovery?
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`MR. THOMPSON: I think that the answer to that,
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`there's a practical part to it, which is that the parties in
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`being able to work together towards a resolution kind of need
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`that information. It also relates to -- overlaps with a lot of
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`issues that actually bear on validity, like commercial success
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`and the importance of the claimed advancements to their product
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`and how it advanced in the marketplace in that regard. So
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`those issues fit into the rubric of any validity analysis under
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`either 102, anticipation, which I don't think I've ever heard
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`there would be one of those. There's some sort of obviousness
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`kind of argument. And so, I mean, the plaintiffs do not --
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`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0010
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`11
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`have addressed their views. We have addressed views back and
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`forth, and we do not believe that they have enough evidence to
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`show that these patents are invalid. In fact, these patents
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`are quite valid. They were carefully examined, and a lot of
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`that's in the pleadings now, a lot of details about that. So
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`there is a disagreement on that, and it does seem to focus on
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`validity, but the case in the context of what damages discovery
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`is overlaps with a lot of that.
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`From the plaintiff's standpoint, having started in
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`2016, we would like to move the case forward, and we don't want
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`unnecessary delay. And if you look at the suggestions, each
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`one of the suggestions that defense makes would add additional
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`time to our schedule in a way that would make it so that this
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`case would be prolonged, and we think that that is not
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`advantageous to the parties.
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`THE COURT: Do you want to respond?
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`MR. CHAIKOVSKY: Yes. I think that required a
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`response, your Honor. First, I'll start from the Fitbit
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`perspective, and then I'll respond to the kind of Philips
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`mischaracterizations.
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`Fitbit perspective: There are noninfringement issues
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`of significance. There are claim construction issues of
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`significance if we get past the 101 stage in terms of inferred
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`infringement, or perhaps even prior art validity but mostly
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`infringement. Many of these claims that they have asserted --
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`12
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`I'm looking at Claim 33, for example, the '233 patent -- are
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`joint infringement at best or induced infringement because they
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`require things like a mobile phone which Fitbit doesn't sell;
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`and because they require multiple devices, we don't infringe
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`these things, at least directly. At best, they have an
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`inducement claim. They say this has been going on since 2016.
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`They can't show you they sent us a claim chart. We asked for
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`it since 2016. The first notice we had of what claims they
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`were asserting was the complaint in this case.
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`They were litigating in Europe for two years against
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`Garmon and Fitbit. They failed. And so what Philips has done
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`now, after failing against Garmon and Fitbit in Europe in
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`litigation from 2016 forward, is now taken these cases to the
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`U.S. There is a case against Garmon in the Central District of
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`California. And you've already spotted the issue. The first
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`thing they want to jump to is money, damages. In these
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`meetings, it's about what units have you sold, how much a unit?
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`That's what they want to jump to. Instead of looking at the
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`hurdles they have to get to a jury and present dollars, what
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`I've heard from counsel before in these meetings is, oh, but we
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`have to get to infringement, and we have noninfringement
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`arguments we don't induce. In fact, two of the patents in what
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`they sent to the Court is, they're going to assert method
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`claims. Two of the patents they want to assert don't have
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`method claims. In fact, the '007 and '233 patents have no
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`13
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`method claims, only systems claims, and they've expired. That
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`means they're not entitled to any damages, period, because they
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`didn't provide adequate notice, and we need to discover that.
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`It doesn't even matter whether they infringe or not.
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`Next we have a 101 issue. Whether we do it on a
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`Rule 12, we think we win there. And, your Honor, we've seen
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`many of your cases, Athena being a popular one. We do think
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`that you are going to exceed the easiness of the 101 on this,
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`perhaps easier than Athena.
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`We have 102, 103. The prior art we've amassed is
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`significant to the invalidity of these high-level abstract
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`filed claim. They have a marking problem, as I've already
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`mentioned. That can be dealt with, be brought before dealing
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`with damages because we're dealing with two patents that have
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`expired. They're only systems claims. They never marked. And
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`we're dealing with two other patents. Let them tell us they're
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`only going to assert the method claims. That's what they have
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`to do because they never marked. And if they want to assert
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`the two method claims to those two patents, they should tell
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`us. They've never said that.
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`Again, this is a run for cash. This is a Philips
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`licensing dispute because Philips licensing has a P&L, and
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`they're just looking for the damages part, and that's why they
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`want damages discovery. And we have lots of liability issues
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`to go for, whether that's infringement, claim construction,
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1062 Page 0013
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`14
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`prior art validity, 101, and marking.
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`THE COURT: So I don't have a creative solution for
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`getting through these cases, but I do have an observation,
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`which is that I think the point of some of the judge
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`involvement in scheduling and having a scheduling conference,
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`and not simply saying "Here's your scheduling order" and be
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`done with it, is that there's a "business as usual" on both
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`sides that isn't in your client's interest. The "business as
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`usual" on the plaintiff side in much litigation is, how do we
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`keep banging on the dollars, the damages, till at some point
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`that number is recognized by the defendant? And if it isn't
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`recognized, how do we get to the end of the day to a trial?
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`And on the defense side, there's I think a fundamental problem
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`between the client's interests and the attorneys' interests,
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`which is that any attorney practicing defensive medicine or
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`defensive law will come up with every argument you have for why
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`you might not win.
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`And what it seems to me is that a really successful
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`scheduling order and plan would actually sort of figure out not
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`what is every single defense and what is every single reason
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`why you think your plaintiff is going to win, but what are the
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`key points, that if those ones could be resolved, then you'd
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`either have a settlement rather than all the money going into
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`legal fees, you know, or the case going away, I mean, if you
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`could get those things teed up, and I'm not hearing that you're
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0014
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`15
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`at that point yet where you have put that together. I can't
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`tell looking at this whether the 101 is the main argument or
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`whether that's just sort of argument one, and we're going to
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`come back with argument two, three, four, and five that are
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`equally strong. I don't know. But it would seem to me it
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`would be helpful and valuable to both sides, frankly, to
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`actually figure out what's the stumbling block from settling
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`this thing.
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`MR. CHAIKOVSKY: Your Honor, I apologize if I
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`interrupted. I do think 101 is going to end up being your
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`number one item here, I do think, because I do think these
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`are -- I mean, we're so far past the threshold that it's
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`differentiated from anything else that is on this. Beyond
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`that, there's always Markmans to conduct no matter what. I do
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`think, if you adopt whatever Philips puts forward, you then end
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`up with a 102/103 coming absolutely next. We always have
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`noninfringement arguments, and, like I said, there's going to
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`be because of the patents being so -- I don't know how to even
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`characterize it other than the weakness. I mean, a lot of
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`these are parallels to what they filed in Europe, and so
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`they're pregnant with so many issues. But the 101 is
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`definitely at the top of the list. And then invalidity, as you
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`said, is kind of really percolating. And then I think you're
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`left with, you know, can you resolve the noninfringement
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`perhaps on a joint infringement/inducement issue? If it's not
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1062 Page 0015
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`16
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`resolved on that, then it's an issue for a jury to decide. And
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`there's marking again as to whether they're even entitled to
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`damages and as of when. On two of the patents, I don't think
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`they can even get damages because they've expired and there's
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`only system claims.
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`MR. THOMPSON: I think we're hearing a litany of
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`defenses, you know, like you predicted. Not one of them have
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`any merit, in our view, and that's why the case needs to move
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`forward on a schedule. I will say, the only reason I brought
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`up the defense thing is because they proposed that stay, and
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`that's why -- I'm sorry, the damages thing -- is because they
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`had proposed that in their pleadings.
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`I will say, though, having heard this, that it is
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`important because it's been a holdup in the negotiations not to
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`be able to get to that point so that the parties were on the
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`same page.
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`As far as the noninfringement, you can hear that there
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`really is no claim element or something that would say it isn't
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`practiced. What happens with this, as you may know, if anybody
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`has a Fitbit or these devices, is you download an application;
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`every individual has one; and then you have to sign up for an
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`account. When you sign up for the account, you establish a
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`functionality that is controlled entirely by Fitbit. And so
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`this notion that, you know, a phone or whatever that has the
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`app on it is not part of what's going on, is not jointly
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1062 Page 0016
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`17
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`orchestrated for this system, is just not well taken from my
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`point of view.
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`But beyond that, of course, that's a bit of a
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`technical thing. As far as elements not being met by those
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`systems, I'm not saying that. And the validity, you know, I
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`disagree. This notion about Europe, Europe is irrelevant,
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`different laws, different patents, different parties; but in
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`addition, there was a payment in Europe. So I don't want -- I
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`don't think that this Court should be focusing on that. I
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`think this Court should be focusing on the issues here, and I
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`think that establishing a regular schedule going forward is the
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`way to do this because otherwise we're going to hear every
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`defense in the book starting, you know, with the first one and
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`going through the end, and every one is going to be the biggest
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`best defense.
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`THE COURT: Well, you're going to hear every defense
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`in the book in any case until the parties find a way to tee up
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`what you think is important for me to look at. But I do think
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`there's always a threshold question of, one, do we start
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`discovery while there's a motion to dismiss hanging out there,
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`and, two, is discovery part and parcel? And --
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`MR. THOMPSON: I will say, your Honor, just a couple
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`of notes here. I think I mentioned that it's over 50
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`paragraphs spanning 20 pages addressing eligibility. The Court
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`has said as recent as two weeks ago in overturning a District
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1062 Page 0017
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`18
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`Court judge because they had accepted a very broad
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`characterization -- and the abstract law is a little bit
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`different than the diagnostic thing because the question is
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`whether it preempts -- but in accepting a very broad one, I
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`think this case, which was the Gemalto case on November 15, is
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`the very most recent Federal Circuit. The question the court
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`said has to be addressed is, what is the claimed advance over
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`the prior art relative to preemption? And in that, the defense
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`had convinced the District Court judge that the claims were
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`abstract because they addressed the idea of reordering data and
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`generating additional data. It sounds a lot like what they put
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`in their brief. The court overturned the District Court judge
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`for accepting that because the claims, when you looked at the
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`claims from what they would understand, a person of ordinary
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`skill in the art, what they would understand the advance to be
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`was actually limited to a permutation that happened in time.
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`"In time" was the advancement.
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`And so what I'm suggesting here, the reason I raise
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`this is not so much to try to argue this 101, but it's the
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`fact, the aspect that the facts about what an advancement is in
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`claims when they're pled, a lot of early cases had no
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`pleadings. But when they're pled and you have to look at this
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`what is the advancement, and you accept the facts as true, we
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`just don't think that there's any basis for them to be filing
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`this motion. We have decided to put in, you know, to address
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0018
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`19
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`their concerns about there not being enough pleadings and add
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`more, so now there's lots. Our complaint now is 60 pages long.
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`There is a lot of detail in our complaint. And so I don't
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`think that this case should be segmented as they have
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`suggested. I think the case should go forward.
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`THE COURT: Well, I'm going to make a decision on
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`whether the discovery...
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`MR. CHAIKOVSKY: Your Honor, if you might, in terms of
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`one solution I think on that is, it seems to me that we could
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`have a pretty quick schedule on 101. I understand it would
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`take a while for you to have your time for your opinion. But I
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`heard a lot about the numerosity of paragraphs, et cetera.
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`Numerosity is not relevant, given the case law, and there's a
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`multitude of cases that I can cite right now. We don't need to
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`get into detail unless you want to. I do think it's a
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`threshold issue here as to whether we should even proceed.
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`THE COURT: I'm looking here. I'm realizing as I'm
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`looking here at the proposed discovery schedule that's filed
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`here as 23-1 that I'm not quite sure I'm understanding what the
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`parties are proposing, so --
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`MR. THOMPSON: I could maybe address that. So we
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`tried to find agreement, and so for the first four dates
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`through March 24, it says "agreed." That meant that the
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`parties -- well, actually, it meant that Philips agreed to what
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`Fitbit had proposed. Then the big difference is this whole
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1062 Page 0019
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`20
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`claim construction, and I was identifying for you that that's
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`where the tension between infringement and validity comes into
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`play. The dates that the plaintiff has here, this April 2
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`through the June 3, that follows the local rules suggestions.
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`It's basically in time with that. And then Fitbit has
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`suggested to delay that several months. Of course, I think
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`they may reevaluate that in light of them saying that they
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`believe that claim construction is important in this case. And
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`then you see that the next date there is their suggestion to
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`stay damages, and Philips does not believe that that is
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`appropriate, and you can see how it would necessarily lead to
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`the schedule being extended even further.
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`And then beyond that, the rest of those dates more or
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`less track out because of the difference of where the parties
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`are, you know, at that time, so one is essentially five or six
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`months behind the other. So that's our view.
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`THE COURT: But the parties are in agreement that
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`discovery would start as of January 10?
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`MR. CHAIKOVSKY: No. I think in our statement we said
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`we would not propose discovery in January. These disclosures
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`that are listed here in the pleadings are agreed to, and I
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`apologize if this was unclear. It's my fault ultimately, your
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`Honor. As we stated and we've seen in other cases of yours, we
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`thought there was no need for discovery at this point pending
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`our threshold issue on the 101 because we do think that
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0020
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`21
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`that's --
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`THE COURT: So what you've built in here in this is an
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`assumption of when --
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`MR. CHAIKOVSKY: So basically the opening claim
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`construction in August 27 is kind of based on the timing, yes,
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`your Honor, I apologize, but, yes, that was an assumption based
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`on kind of assuming a time to order from prior orders.
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`Obviously it's up to the Court's discretion and it's up to when
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`you give the order. These perhaps would have been better
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`stated, in hindsight, as being so many days after a 101 order.
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`That's probably, and if I had to redo this, I would have redone
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`it that way. Everything from the opening claim construction
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`briefs on down should have been in your Honor's discretion and
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`then X number of days from your Honor's order.
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`THE COURT: And when are you proposing that discovery
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`begin?
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`MR. CHAIKOVSKY: Assuming the worst-case scenario for
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`our Fitbit were to happen, that some or all claims were to
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`survive a Rule 12(b)(6) motion on 101, I think at the time of
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`that order, I think discovery is allowed at that time with
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`respect to whatever remains.
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`THE COURT: And how much time were you assuming
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`between then and any of your further deadlines here? You're
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`basically saying it doesn't really matter; you're going to
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`start that discovery at some point.
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1062 Page 0021
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`22
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`MR. CHAIKOVSKY: I don't think it matters to the
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`Markman process. I don't think the discovery, you know,
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`looking at the intrinsic evidence and record, et cetera, I
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`don't think the discovery is relevant to the Markman process,
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`so yo
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