After Philips filed a complaint against Fitbit at the International Trade Commission, Fitbit filed suit seeking a declaration that it does not infringe three Philips’ patents – U.S. 7,845,228, entitled “Activity Monitoring,” U.S. 9,820,698, entitled “Actigraphy Methods and Apparatuses,” and U.S. 9,717,464, entitled “Continuous Transdermal Monitoring System and Method.” The case was originally filed in the Northern District of California, but was transferred to Massachusetts when the California court determined that Philips’ service of the ITC complaint at Fitbit’s California headquarters was not sufficient to qualify as purposefully directing its activities to the forum, and that specific personal jurisdiction over Philips (who does not do business in the United States) did not exist. The court noted that at the time the case was filed, Fitbit and Philips were engaged in patent-related actions in N.D. California, D. Mass., the ITC and the PTO. The court noted that Rule 42(k), which allows for jurisdiction in any state over a foreign entity without sufficient contacts in any single state, could be defeated by Philips designating a state in which the suit could proceed. As Philips identified Massachusetts, the location of two Philips’ subsidiaries, was a suitable forum, the court transferred the case to Massachusetts in August.
Judge Stearns has now granted Philips’ motion to stay pending resolution of the ITC action. The ITC has already made a summary determination of non-infringement of two of the patents and the third patent is infringed by Fitbit. A trial on validity is scheduled to begin later this month, with a final decision expected in May 2021. An institution decision from the PTAB on Fitbit’s petition for inter partes review is expected in the next four weeks as well.