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3615192 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

JEFFREY C. HALLAM (State Bar No. 161259) 

E-Mail: jhallam@sideman.com 

ZACHARY J. ALINDER (State Bar No. 209009) 

E-Mail: zalinder@sideman.com 

ELLEN P. LIU (State Bar No. 280459) 

E-Mail: eliu@sideman.com 

REBECCA K. FELSENTHAL (State Bar No. 303476) 

E-Mail: rfelsenthal@sideman.com

SIDEMAN & BANCROFT LLP 

One Embarcadero Center, Twenty-Second Floor 

San Francisco, California 94111-3711 

Telephone: (415) 392-1960 

Facsimile: (415) 392-0827 

Attorneys for Plaintiff 

FITBIT, INC. 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN FRANCISCO DIVISION 

FITBIT, INC., 

Plaintiff, 

v. 

LAGUNA 2, LLC, et al., 

Defendants. 

 Case No. 3:17-cv-00079 EMC (KAW) 

PLAINTIFF FITBIT, INC.’S REPLY IN 

SUPPORT OF ITS MOTION FOR 

PARTIAL SUMMARY JUDGMENT 

Judge: Honorable Edward M. Chen 

Date: June 28, 2018 

Time: 1:30 p.m. 

Crtrm.: 5, 17th Floor 

Case 3:17-cv-00079-EMC Document 262 Filed 06/14/18 Page 1 of 21
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3615192 i Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

TABLE OF CONTENTS 

Page 

I. INTRODUCTION ................................................................................................................... 1

II. THE COURT SHOULD GRANT FITBIT’S MOTION IN FULL ........................................ 1

A. Defendants Are Liable For Breach of Contract .......................................................... 1

B. Federal Trademark Counterfeiting and Infringement ................................................. 7

1. Defendants Concede The Presumption Here .................................................. 8

2. The Presumption Applies to Defendants’ Counterfeit Sales ........................... 8

a. Scrap Products Are Non-Genuine, Different, And Confusing ............ 9

b. Defendants Are Liable For Counterfeit Sales Too ............................ 10

3. Defendants Are Liable For Their Infringing Distribution Chain .................. 10

4. Fitbit Has Established Likelihood of Confusion ........................................... 13

C. Federal Unfair Competition and California Unfair Competition .............................. 13

D. Defendants’ Final Damages Argument Is Meritless ................................................. 13

III. RESPONSE TO DEFENDANTS’ OBJECTIONS AND JUDICIAL NOTICE ................... 14

A. Responses to Defendants’ Evidentiary Objections 1-3 ............................................. 14

B. Responses to Defendants’ Evidentiary Objections 4 [sic]-7 ..................................... 14

C. Response to Defendants’ Evidentiary Objection 8 ................................................... 14

D. Responses to Defendants’ Evidentiary Objections 9-11 ........................................... 14

E. Motion to Strike RJN and Whitten Declaration Paragraphs ..................................... 15

IV. FITBIT’S ADDITIONAL OBJECTIONS TO SOOD DECL. AND OPP. LENGTH ......... 15

V. CONCLUSION ..................................................................................................................... 15

 

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3615192 ii Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

TABLE OF AUTHORITIES 

 Page(s) 

Cases 

A. Kemp Fisheries, Inc. v. Castle & Cooke, Inc., Bumble Bee Seafoods Div., 

852 F.2d 493 (9th Cir. 1988) ......................................................................................................... 7 

Adobe Systems Inc. v. Blue Source Group, Inc., 

125 F. Supp. 3d 945 (N.D. Cal. 2015) ........................................................................................ 15 

Asmodus, Inc. v. Junbiao Ou, 

2017 WL 2954360 (C.D. Cal. May 12, 2017) ............................................................................. 12 

Bar’s Leaks Western, Inc. v. Pollock, 

148 F. Supp. 710 (N.D. Cal. 1957) ............................................................................................. 15 

Brae Transp., Inc. v. Coopers & Lybrand, 

790 F.2d 1439 (9th Cir. 1986) ................................................................................................. 6, 10 

Cahill v. Golden Gate Bridge, Highway & Trans. Dist., 

2016 WL 1070655 (N.D. Cal. Mar. 18, 2016) ................................................................ 17, 18, 19 

Coach, Inc. v. Celco Customs Servs. Co., 

2014 WL 12573411 (C.D. Cal. June 5, 2014) ............................................................................. 16 

Cordas v. Uber Techs., Inc., 

228 F. Supp. 3d 985 (N.D. Cal. 2017) ........................................................................................ 18 

El Greco Leather Products Co., Inc. v. Shoe World, Inc., 

806 F.2d 392 (2d Cir. 1986) .................................................................................................. 13, 14 

Fonovisa, Inc. v. Cherry Auction, Inc., 

76 F.3d 259 (9th Cir. 1996) ......................................................................................................... 16 

FTC v. EDebitPay, LLC, 

695 F.3d 938 (9th Cir. 2012) ......................................................................................................... 8 

In re Gilead Scis. Sec. Litig., 

536 F.3d 1049 (9th Cir. 2008) ....................................................................................................... 5 

Hatcher v. County of Alameda, 

2011 WL 1225790 (N.D. Cal. Mar. 31, 2011) .................................................................. 8, 12, 17 

Hewlett-Packard Co. v. Repeat-0-Type Stencil Mfg. Corp., 

1995 WL 338181 (N.D. Cal. Feb. 7, 1995) ................................................................................. 17 

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3615192 iii Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

Intel Corp. v. Terabyte Int'l, Inc., 

6 F.3d 614 (9th Cir. 1993) ..................................................................................................... 13, 14 

Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 

456 U.S. 844 (1982) .............................................................................................................. 15, 16 

Jesse A. Verrecchia, et al. v. Darrell Aviss, et al., 

2017 WL 9486151 (C.D. Cal. Nov. 8, 2017) .............................................................................. 18 

Lawyers Title Ins. Corp. v. U.S. Fid. & Guar. Co., 

122 F.R.D. 567 (N.D. Cal. 1988) ................................................................................................ 10 

Letizia v. Facebook Inc., 

267 F. Supp. 3d 1235 (N.D. Cal. 2017) .................................................................................... 6, 9

Lockheed Martin Corp. v. Network Sols., Inc., 

194 F.3d 980 (9th Cir. 1999) ....................................................................................................... 16 

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 

658 F.3d 936 (9th Cir. 2011) ....................................................................................................... 16 

Maples v. SolarWinds, Inc., 

50 F. Supp. 3d 1221 (N.D. Cal. 2014) .......................................................................................... 9 

MetroPCS v. Devor, 

215 F. Supp. 3d 626 (N.D. Ill. 2016) .......................................................................................... 15 

Novadaq Techs., Inc. v. Karl Storz GmbH & Co. K.G., 

143 F. Supp. 3d 947 (N.D. Cal. 2015) ........................................................................................ 12 

Operating Engineers’ Pension Tr. Fund v. Clark's Welding & Mach., 

688 F. Supp. 2d 902 (N.D. Cal. 2010) .......................................................................................... 7 

People v. Barro, 

93 Cal. App. 4th 63 (2001) .......................................................................................................... 19 

Rearden LLC v. Rearden Commerce, Inc., 

683 F.3d 1190 (9th Cir. 2012) ..................................................................................................... 17 

Rocawear Licensing LLC v. Pacesetter Apparel Group, 

2007 WL 5289737 (C.D. Cal. Sept. 12, 2007) ...................................................................... 15, 16 

Shell Oil Co. v. Winterthur Swiss Ins. Co., 

12 Cal. App. 4th 715 (1993) .......................................................................................................... 9 

Ticor Title Ins. Co. v. Rancho Santa Fe Assn., 

177 Cal.App.3d 726 (1986) ....................................................................................................... 7, 8 

Transgo, Inc. v. Ajac Transmission Parts Corp., 

768 F.2d 1001 (9th Cir. 1985) ..................................................................................................... 15 

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3615192 iv Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

United States v. Farmer, 

370 F.3d 435 (4th Cir. 2004) ....................................................................................................... 14 

United States v. Stuart, 

489 U.S. 353 (1989) .................................................................................................................... 10 

Vernor v. Autodesk, 

621 F.3d 1102 (9th Cir. 2010) ..................................................................................................... 13 

In re Yan, 

381 B.R. 747 (N.D. Cal. 2007) ................................................................................................ 6, 10 

Statutes 

Cal. Pen. Code § 1385 ....................................................................................................................... 19 

Other Authorities 

Fed. R. Evid. 401 ............................................................................................................................... 19 

Fed. R. Evid. 403 ............................................................................................................................... 19 

Fed. R. Evid. 702 ............................................................................................................................... 19 

Fed. R. Civ. Proc. 8(c)(1) .................................................................................................................. 12 

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3615192 1 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

Plaintiff Fitbit, Inc. (“Fitbit” or “Plaintiff”) respectfully submits the following Reply 

Memorandum in Support of Fitbit’s Motion for Partial Summary Judgment (the “Motion”), ECF 

No. 246, against Defendants and in response to their Opposition (“Opp.”), ECF No. 254. 

I. INTRODUCTION 

Stripped bare of bluster and rhetoric, Defendants’ Opposition is a thinly-veiled attempt to 

avoid summary judgment by (i) asking the Court to rewrite an agreement years after the fact, (ii) 

conclusorily denying responsibility for their orchestration of an infringement scheme, which they 

actively concealed from Fitbit and from which they received millions of dollars in profit, and (iii) 

ignoring all of the contemporaneous and subsequent evidence that confirms both arguments to be 

unsupported and unsupportable. Defendants’ conclusory denials, unwarranted deductions of fact, 

and unreasonable inferences are insufficient to create a genuine material factual dispute to avoid 

summary judgment. See In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008). Indeed, 

with the undisputed facts insurmountably stacked against them, Defendants do not even rebut 

numerous arguments, conceding that summary judgment is appropriate. Accordingly, the Court 

should grant Fitbit’s Motion in its entirety. 

II. THE COURT SHOULD GRANT FITBIT’S MOTION IN FULL 

A. Defendants Are Liable For Breach of Contract 

The Court should grant summary judgment as to Defendants’ liability for breach of contract 

because the parties’ agreement (1) did not allow resale of whole products, (2) required written 

approval for use of Fitbit’s brand or trademarks, and (3) required remission of 70% of the net 

proceeds that Defendants received. See Motion, Section III.D. As to the first and third arguments, 

none of the arguments in Defendants’ Opposition are supported by the undisputed facts, including 

Defendants’ numerous damning admissions. Further, Defendants do not dispute, and therefore 

concede, that summary judgment is appropriate on the second ground above. See Opp., pp. 7-12. 

Defendants’ overarching argument asks this Court to change the entire nature of the 

agreement with Fitbit by construing the word “repurpose” in the SOW to mean “resell.” Opp., pp. 

8:1-12:3. Doing so would not only fundamentally alter the intended purpose of the agreement, but 

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3615192 2 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

would also contradict (a) the plain meaning of the term “repurpose,” (b) the undisputed evidence of 

the parties’ intent at the time the agreement was formed, (c) the undisputed evidence regarding the 

parties’ disclosed performance under the agreement, and (d) their representations over the course of 

the relationship. See Brae Transp., Inc. v. Coopers & Lybrand, 790 F.2d 1439, 1443 (9th Cir. 1986) 

(“The court may consider the nature and object of the contract, as well as the preliminary 

negotiations and the circumstances under which it was made.”); Letizia v. Facebook Inc., 267 F. 

Supp. 3d 1235, 1251 (N.D. Cal. 2017) (“[T]he most reliable evidence of the parties’ intentions is 

their conduct after the contract is signed and before any controversy has arisen.”). There is no 

genuine factual dispute with regard to Defendants’ breach of contract here for at least six reasons. 

First, Defendants agreed up front that they would not be able to resell anything “as whole,” 

confirming with Fitbit: “Sounds perfect.” See Motion, Section III.D. Defendants further represented 

that their settlement reports to Fitbit would contain a section for resale of whole products (section 3), 

if resale of whole products were later authorized. Id. Three days later, Defendants reflected this 

agreement to not resell whole products and to only recycle and/or destroy products in the SOW, 

which Defendants admit they drafted and which explicitly limited resale to “resale of recycled 

commodities.” See id. Thus, resale was expressly contemplated in the agreement between Fitbit and 

Defendants, but it also was expressly limited to resale of commodities. Id. Moreover, the SOW 

further confirmed Defendants’ agreement not to resell by prohibiting any use of Fitbit’s brand or 

trademarks without Fitbit’s written authorization, which they admit they never obtained. Id. 

Defendants argue that their May 26, 2015 email wherein they explicitly agreed that they 

would not resell whole Fitbit products, and would get Fitbit’s approval in the future for any such 

resale, is inadmissible parol evidence (see Opp., pp. 9:24-10:6) because this email alone destroys 

their entire case (though there are many more like it). But bad evidence is not the same as parol 

evidence. The parol evidence rule provides that terms “set forth in writing intended by the parties as 

a final expression of their agreement with respect to such terms . . . may not be contradicted by 

evidence of any prior agreement or of a contemporaneous oral agreement.” See In re Yan, 381 B.R. 

747, 754–55 (N.D. Cal. 2007) (citing Cal. Code of Civ. Proc. § 1856(a)). Here, it is undisputed that 

the SOW has no integration or merger clause, and Defendants have offered no evidence in their 

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3615192 3 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

Opposition suggesting that the SOW was the exclusive and entire embodiment of all terms of the 

Parties’ agreement. See Declaration of Zachary J. Alinder in Support of Motion for Partial Summary 

Judgment (“Alinder Decl.”), ECF No. 234, Ex. I at FIT005987-88; see also, A. Kemp Fisheries, Inc. 

v. Castle & Cooke, Inc., Bumble Bee Seafoods Div., 852 F.2d 493, 495 (9th Cir. 1988) (if a contract 

is not integrated, the parol evidence rule does not apply). 

Even if the SOW were an integrated contract, however, the May 26, 2015 email (and other 

similar emails and documents) do not contradict any terms in the SOW, but instead confirm its 

unambiguous language. See Operating Engineers’ Pension Tr. Fund v. Clark's Welding & Mach., 

688 F. Supp. 2d 902, 911 (N.D. Cal. 2010) (court can receive evidence concerning parties’ intentions 

to determine whether an ambiguity exists); Motion, Section III.D. Defendants’ monthly settlement 

reports and certificates of recycling, and all of their communications with Fitbit prior to the lawsuit, 

further reflect the purported recycling of tons of raw materials, not the resale of whole products. See

Motion, Sections III.D-G. Indeed, Defendants’ operations manager Kyle Regal confirmed, four days 

after he sent Fitbit the SOW, the Parties’ intent that “anything that can be broken down to raw 

materials will be recycled accordingly (most plastics, cardboard, metals, etc),” and further confirmed 

that the other two “avenues” for Fitbit scrap products did not include resale. See Alinder Decl., Ex. 

S; Ex. E at 91:20-96:16. Thus, there was no expressed intent of any party at the time to allow resale 

of whole scrap products, quite the opposite. See Motion, Section III.D; Ticor Title Ins. Co. v. 

Rancho Santa Fe Assn., 177 Cal.App.3d 726, 730 (1986) (“The fundamental canon of interpreting 

written instruments is the ascertainment of the intent of the parties.”). 

Second, Defendants’ argument that the use of the term “repurpose” in the Preamble and 

Certification section of the SOW somehow authorized “resale” of whole products is absurd. See 

Opp., pp. 8:15-9:23. The word “repurpose” is not in the actual Services section of the SOW, but 

even if it had been, their argument makes no sense. See Motion, Section III.D. The plain meaning 

of the word “repurpose” is to “[a]dapt for use in a different purpose.” See, e.g., Oxford English 

Dictionary, available at https://en.oxforddictionaries. com/definition/repurpose; accord Google’s 

definition of repurpose. Resale of whole products for the exact same intended purpose is the 

opposite of repurposing a product or component. As Defendant Baker described to Fitbit at the time, 

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3615192 4 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

repurposing means turning it into something new or different, for example, turning the rubber from a 

Fitbit product into “soles for Sandals and Mats.” Alinder Decl., Ex. W at FIT008511. 

Reading “repurpose” to mean “resell” would not only violate the entire purpose of the 

agreement (scrap destruction and recycling), it would also directly contradict the definition for 

“repurpose at the product or component level” that Defendants put in the agreement itself: “meaning 

that product would be recycled down to plastic, metal, wire, cardboard or other commodity level 

components.” See id., Ex. I at FIT005988 (emphasis added). This “meaning,” also drafted by 

Defendants, modifies the entire prior sentence as a summative modifier by referring to each element 

of the prior sentence together: “product,” “recycling,” and “component.” Id.. Finally, reading 

repurpose to mean resale would also directly contradict the agreed Services to be provided by BCS, 

which limited resale to “resale of recycled commodities,” and which expressly prohibited BCS from 

using Fitbit’s brand or trademarks without prior written approval. See id., Ex. I at FIT005987; see 

also Ticor, 177 Cal. App. 3d at 730 (“A court must view the language in light of the instrument as a 

whole and not use a ‘disjointed, single-paragraph, strict construction approach.’”). It is undisputed 

that Defendants never sought or obtained such approval and that all of their sales violated this 

provision, because the products they resold with Cali were materially different from genuine 

products and contained Fitbit’s trademarks on the products themselves (not to mention the 

counterfeit packaging and cables). See Motion, Section III.D.-H. Defendants do not even challenge 

this last argument in Opposition, conceding that the Court should grant Fitbit’s Motion on at least 

this ground. See Opp., pp. 7-12; see also Hatcher v. County of Alameda, 2011 WL 1225790, at *3 

(N.D. Cal. Mar. 31, 2011) (failure to address arguments in opposition concedes those claims). 

Third, Defendants’ attempt to rewrite the contractual terms years later is contrary to basic 

hornbook law on contract interpretation. It is well established that specific language controls over 

more general language, and where specific and general provisions conflict, the specific provisions 

ordinarily qualify the meaning of the more general one. See FTC v. EDebitPay, LLC, 695 F.3d 938, 

944 (9th Cir. 2012). Arguing that “repurpose” meant “resale” violates this canon. The use of 

“repurpose” in the Preamble in reference to allowed services is more specifically defined in the 

actual “Services” section of the SOW and cannot be read to allow some additional service. Alinder 

Case 3:17-cv-00079-EMC Document 262 Filed 06/14/18 Page 9 of 21
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3615192 5 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

Decl., Ex. I at FIT005988; Motion, Section III.D. The “Services” section of the SOW only allows 

for resale of recycled commodities. Id. The other “repurpose” language that Defendants cite is in 

the “Certification” section of the SOW, not the “Services” section, and therefore also cannot be read 

to expand the specifically allowed Services. Id. 

Further, repurpose cannot possibly be read as resale of whole products, given that the Parties 

actually used the term “resale” where that was their intent, as they did (i) for “resale of recycled 

commodities” in the SOW, and (ii) in agreeing up front not to “resell anything.... [m]aybe in time we 

can resell something as whole, but for now we will have to break things down to recycle and sell for 

commodity.” Motion, Section III.D. On the other hand, interpreting “repurpose” as its common 

meaning does not render the term surplusage, as products or components could be repurposed into 

found art, science projects, jewelry, or as Defendant Baker explained any “new items that use this 

material,” including sandals or mats. Alinder Decl., Ex. W at FIT0008511. On the other hand, 

Defendants’ interpretation of “repurpose” that would render the term “resale” here surplusage and 

violate the rule of giving “each word significance.” Shell Oil Co. v. Winterthur Swiss Ins. Co., 12 

Cal. App. 4th 715, 753 (1993). 

Finally, even though the Court should not find any ambiguity in the word “repurpose,” any 

ambiguity must be resolved against Defendants as the undisputed drafters of the SOW. Maples v. 

SolarWinds, Inc., 50 F. Supp. 3d 1221, 1228 (N.D. Cal. 2014); see also Motion, Section IV.B; 

Alinder Decl., Ex. D at 147:2-5. Defendants do not, and cannot, dispute this, and thereby concede 

that the Court should construe any contractual language ambiguities in the SOW against them. 

Fourth, the Parties’ conduct after entering into the agreement was also consistent with the 

parties’ expressed intent (rather than Defendants’ new one) and should be given great weight here. 

See Letizia, 267 F. Supp. 3d at 1251. Defendants continued to represent to Fitbit that they were 

recycling all products at the commodity level, reporting to Fitbit, month after month, about the tons 

of purported raw materials that had been recycled. Motion, Sections III.D-G; Alinder Decl., Ex. R. 

Defendants never reported the resale of whole products in their monthly reports to Fitbit, despite 

representing that there was a section in these reports “used only if we resell items.” Alinder Decl., 

Ex. T at 6023. Defendants confirmed again about nine months into the relationship that they “had 

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3615192 6 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

been given strict instructions to destroy all Fitbits for recycling.” Id. Indeed, Defendants lied to 

Fitbit about the resale of products to the bitter end, representing to Fitbit on November 30, 2016 that 

they had not resold any scrap Fitbit products. See Declaration of Jeff Bonham in Support of Fitbit’s 

Motion for TRO (“Bonham TRO Decl.”), ECF No. 49-1, ¶ 5. That Defendants have now constructed 

a new definition for “repurpose” years later in an attempt to immunize their unlawful conduct should 

be given no weight by the Court. See Lawyers Title Ins. Corp. v. U.S. Fid. & Guar. Co., 122 F.R.D. 

567, 569 (N.D. Cal. 1988). Defendants’ secret belief about the meaning of the term “repurpose” 

makes no difference: “proper construction of an agreement is that given by one of the parties when 

‘that party had no reason to know of any different meaning attached by the other, and the other had 

reason to know the meaning attached by the first party.’” United States v. Stuart, 489 U.S. 353, 368 

n. 7 (1989); see also Brae Transp., 790 F.2d at 1443 (court will pierce the objective form of the 

contract if contract language used to conceal rather than express the true intent). 

Fifth, Defendants’ reliance on their R2 certification and two instances of required destruction 

(rather than recycling) provides no cover for their unlawful conduct. Opp., pp. 10:16-12:3. The 

Court should not consider parol evidence contradicting the plain language of the SOW at all, let 

alone evidence so far afield. See In re Yan, 381 B.R. at 754–55. Defendants never indicated at the 

time of the agreement that they intended to use the R2 standard as cover for resale. See, e.g., 

Alinder Decl., Exs. I & T. And, the R2 standard does not permit resale if, like here, the “customer 

directs otherwise” or if resale is “contrary to commercial agreements.” Declaration of Matthew G. 

Whitten, Ex. K, ECF No. 241-16, at §§ 2(a)(1) & 6(a). As discussed above, the agreement between 

the parties did not permit resale of whole products, and there is no dispute that Defendants received 

repeated directions from Fitbit that the Fitbit scrap was to be recycled or destroyed, and not resold. 

Motion, Sections III.D-G. Likewise, the two instances cited by Defendants where Fitbit required 

destruction (rather than recycling) just add further support for Fitbit. Those products had issues, 

including a product recall, such that no recycling of the product could occur, and indeed the 

destruction needed to be witnessed by a government representative. See Alinder Decl., Exs. J, PP, 

QQ. These two instances therefore confirm that the intent of the agreement was to recycle and resell 

raw commodities from the scrap Fitbit products, such that Fitbit specifically informed Defendants in 

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3615192 7 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

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these two instances that no recycling of any commodities could occur. See id; see also id., Ex. Z. 

Further, Defendants’ submission of a declaration and report from their R2 expert, Sarah 

Cade, does not create a question of disputed fact here. See Opp., pp. 11:13-12:3. Indeed, the only 

specific document from the case that Ms. Cade cites is the preamble in the SOW, which as set forth 

above does not support her conclusion. See Declaration of Sarah Cade (“Cade Decl.”), ECF No. 

256, at ¶ 4. At most, the Cade Decl. shows that Defendants duped their own expert by not providing 

her with the relevant evidence. Ms. Cade’s declaration cannot change the agreement between the 

parties. Nor does it explain away the clear directions from Fitbit and the language in the agreement 

limiting resale to recycled commodities and requiring express authorization to use Fitbit’s brand or 

trademarks, which even under the R2 Standard, required Defendants not to resell whole products. 

See Alinder Decl., Ex. VV; see also Declaration of Michael Easterbrook in Support, filed 

concurrently with this Reply, ¶¶ 2-8 and Ex. A; ECF No. 241-16, at §§ 2 & 6. 

Sixth, it is undisputed that Defendants were obligated, but failed, to pay Fitbit 70% of “net 

proceeds” they earned pursuant to the Parties’ agreement. Defendants’ Motion for Summary 

Judgment (“Defendants’ Motion”), ECF No. 241, p. 6:7-10; Motion, Section IV.B. Defendants’ 

argument that there was no breach of the payment provision is based solely on the claim that “there 

were no profits yet to which the 70% formula could be applied.” See Opp., p. 12:4-24. The claim 

that Defendants were still waiting to sort out the profits before remitting to Fitbit is made of whole 

cloth. As the undisputed facts show, Defendants paid Fitbit along the way for Fitbit’s purported 

share of 70% of the fake recycled commodity sales that Defendants were reporting to Fitbit on a 

monthly basis. See, e.g., Alinder Decl., Ex. R (showing month after month of settlement reports and 

amounts to be remitted to Fitbit by Defendants for each class of purportedly recycled commodities); 

see Motion, Section III.D. The undisputed facts, including their admissions, establish that there is no 

genuine factual dispute as to this breach; it is at most a disingenuous attempt to rewrite the facts. 

B. Federal Trademark Counterfeiting and Infringement 

Defendants’ Opposition also fails to raise a triable issue of material fact to preclude summary 

judgment as to their infringement and unfair competition liability. Defendants’ primary argument – 

that Fitbit somehow authorized their infringement (Opp., pp. 12:25-13:19) – fails for the same 

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3615192 8 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

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reasons as their contract argument above. Further, to the extent that Defendants’ arguments rely on 

an affirmative defense of license, that argument not only fails for the same reasons, but in addition, it 

has long since been waived and would be prejudicial to allow here after fact discovery has closed. 

See Defendants’ Answer, ECF No. 119 (asserting no affirmative defenses); FRCP 8(c)(1) (“In 

responding to a pleading, a party must affirmatively state any avoidance or affirmative defense, 

including . . . license[.]”); Novadaq Techs., Inc. v. Karl Storz GmbH & Co. K.G., 143 F. Supp. 3d 

947, 954 (N.D. Cal. 2015) (refusing affirmative defense in opposition to summary judgment). 

Finally, none of Defendants’ trademark-specific arguments raise any material disputed issue here. 

1. Defendants Concede The Presumption Here 

As a preliminary matter, Defendants do not dispute that the scrap products they resold were 

materially different, and also fail to address the argument that the Court should presume confusion 

in material difference cases, like this. See Motion, p. 17:27-28; accord Asmodus, Inc. v. Junbiao 

Ou, 2017 WL 2954360, at *16 (C.D. Cal. May 12, 2017); cf. Opp., pp. 12-19. In failing to address 

this argument, they concede it. See Hatcher, 2011 WL 1225790, at *3. 

Instead of taking this argument head-on, Defendants create a straw man, arguing that 

refurbished products are not “counterfeit.” Opp., pp. 13:2-16:5. But, the undisputed facts and 

admissions are clear that Defendants were not simply selling refurbished genuine products and 

advertising it correctly as such. See Motion, Sections III.C-I. Instead, Defendants were selling 

non-genuine scrap product and never informed their co-conspirators downstream that these 

products were scrap and had not met Fitbit’s quality control standards. Id., at Sections III.E-H. 

Further, for many products, the “refurbishment” process did not fix significant physical defects, 

and in other instances, introduced significant defects like stripping the products of their serial 

number and related regulatory information. See id., Section III.H. The undisputed evidence 

therefore, as Defendants concede in failing to rebut this evidence, is that these scrap products were 

materially different and therefore non-genuine, infringing, and presumptively confusing. See id.

2. The Presumption Applies to Defendants’ Counterfeit Sales 

As set forth above, Defendants’ only challenge to the presumption is with respect to their 

resale of counterfeit products. See Opp., pp. 13:24-16:8. Their arguments fail to distinguish 

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3615192 9 Case No. 3:17-cv-00079 EMC (KAW)

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Fitbit’s caselaw and also ignore their own direct and indirect liability for counterfeit sales. Further, 

most of Defendants’ arguments appear to be thinly-veiled attempts to assert a first sale doctrine 

affirmative defense. See Vernor v. Autodesk, 621 F.3d 1102, 1107 (9th Cir. 2010) (confirming it is 

an affirmative defense). While the first sale doctrine does not apply for the reasons this Court 

previously found in granting Fitbit preliminary injunctive relief here (ECF No. 52 at pp. 3-4), and 

Defendants do not argue any first sale occurred here, Defendants waived all affirmative defenses 

long ago and it would be prejudicial to revive any such defenses now. See Answer, ECF No. 119. 

a. Scrap Products Are Non-Genuine, Different, And Confusing 

Next, Defendants spend three pages arguing that refurbished products are not “counterfeit,” 

though this is not Fitbit’s argument at all. Opp., pp. 14-16. Fitbit’s argument is that the scrap 

products are non-genuine and materially different, and therefore infringing and inherently 

confusing. See Motion, pp. 17:11-19:2; see also Alinder Decl., Ex WW at 47 & 72. One of the 

factors rendering these scrap products materially different and non-genuine is that Defendants have 

subverted Fitbit’s quality controls by reselling scrap products. Under Ninth Circuit law, “[o]ne of 

the most valuable and important protections afforded by the Lanham Act is the right to control the 

quality of the goods manufactured and sold under the holder's trademark.” Intel Corp. v. Terabyte 

Int'l, Inc., 6 F.3d 614, 618 (9th Cir. 1993). Defendants were the driving force in subverting this 

quality control protection provided by the Lanham Act to Fitbit, and therefore, utterly fail to 

distinguish themselves from the settled caselaw in support of Fitbit. 

For example, Defendants argue that the El Greco case is distinguishable because (1) the 

offending manufacturer in El Greco made false statements to the consuming public about the shoes 

by marketing them as “new” rather than “refurbished,” and (2) the shoes were never genuine 

because under the terms of the parties’ contract, the plaintiff had never accepted them. Opp., p. 

14:11-20. But here, the scrap products were resold as “like new” refurbished goods (see Motion, 

Section III.F), and the agreement did not allow for resale or use of Fitbit’s brand or trademarks, 

(see id., Section III.D), both confirming that El Greco is directly on point. See El Greco Leather 

Products Co., Inc. v. Shoe World, Inc., 806 F.2d 392 (2d Cir. 1986). 

Defendants also ignore the main holding of El Greco – that a trademark owner has the right 

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3615192 10 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

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& BANCROFT LLP 

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to control the quality of goods and that trademarked goods are not genuine where they are sold 

without authorization. El Greco, 806 F.2d 392, 395. Even if Defendants had been entitled to resell 

scrap products (though they were not), they concede they never received permission to use Fitbit’s 

brand or trademarks, which they did in reselling these products. See Motion, Section III.H. And, 

if they had any question, under El Greco, they were required at a minimum to get clarification from 

Fitbit “on how to dispose of” the scrap products. See El Greco, 806 F.2d 392, 396. 

b. Defendants Are Liable For Counterfeit Sales Too 

Defendants next argue that United States v. Farmer, 370 F.3d 435 (4th Cir. 2004), does not 

apply because there the defendant bought “factory-reject clothes with no brand labels, then sewed 

on counterfeit brand labels.” Farmer, 370 F.3d at 436. Defendants’ argument ignores the 

undisputed evidence that Defendants, through Cali, repackaged Fitbit products, added counterfeit 

cables, and counterfeit Fitbit labels before reselling and generating massive profit for Defendants. 

See Motion, Sections III.D-F & IV.C; Declaration of Jonathan Manhan (“Manhan Decl.”), ECF No. 

241-19, ¶ 6. Farmer is therefore on point. Further, Defendants do not even discuss the Milstein or 

Terabyte cases or attempt to refute Fitbit’s argument that their repackaging of products and 

material alterations to the Aria scales with Cali rendered those products counterfeit. See Motion, p. 

19:3-17 & Section III.H. Defendants cannot dispute this because, during the pendency of this 

action, U.S. Customs and Border Protection (“CBP”) seized 1,243 “Counterfeit Fitbit Scales” that 

Cali was attempting to import in conjunction with Defendants. Id. In seeking to get those products 

released by CBP, Defendants explained their direct involvement and control: 

Please understand that the product is sent to Cali Resources Inc. and Cali Resources 

SA de CV for processing. We only sell refurbished products and do not use logos 

unless we have prior written consent from manufacturer. All material is used 

refurbished and sold as such with warranties from us not the manufacturer. 

Id. Thus, Defendants admitted to the direct distribution and resale of counterfeit and scrap Fitbit 

products, with Cali merely “processing” those products for Defendants. See id. 

3. Defendants Are Liable For Their Infringing Distribution Chain 

Next, Defendants argue in multiple sections (Opp., pp. 16:7-17:8 & 18:17-19:5) that by 

putting an additional distributor, L2, between them and Cali and the majority of their product sales, 

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3615192 11 Case No. 3:17-cv-00079 EMC (KAW)

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they should be allowed to escape liability. Not so. Defendants are liable for orchestrating, 

controlling, and ultimately profiting from the resale of infringing products to consumers under 

multiple legal theories. See Motion, Sections III.E-H; see also Rocawear Licensing LLC v. 

Pacesetter Apparel Group, 2007 WL 5289737 at *6 (C.D. Cal. Sept. 12, 2007) (co-conspirators 

need not know all the details). Defendants complete reliance on Inwood is misplaced, and 

misconstrue the law and ignores their own critical and direct role in the tortious conspiracy to 

distribute infringing scrap products. See Opp., pp. 17:7-19:1 (citing Inwood Laboratories, Inc. v. 

Ives Laboratories, Inc., 456 U.S. 844 (1982)). Whether based on the joint and several liability, 

conspiracy liability, vicarious liability, or contributory liability, their liability for infringement that 

they orchestrated, controlled, and profited from handsomely is settled under federal law. See 

Adobe Systems Inc. v. Blue Source Group, Inc., 125 F. Supp. 3d 945, 973 (N.D. Cal. 2015). 

First, “[i]n copyright, trademark and unfair competition actions under federal law, all persons 

participating in the actionable conduct are jointly and severally liable.” Bar’s Leaks Western, Inc. v. 

Pollock, 148 F. Supp. 710, 714 (N.D. Cal. 1957). Thus, where multiple defendants are involved in a 

distribution chain that ultimately sells infringing products to consumers, any member “can be 

‘jointly and severally liable’ for the alleged misconduct.” Adobe Systems, 125 F. Supp. 3d at 973. 

Second, it is undisputed that Defendants were all members of the distribution chain of the 

infringing “Fitbit” products, and further that Defendants orchestrated the conspiracy to distribute 

infringing products and set up the distribution chain. See Transgo, Inc. v. Ajac Transmission Parts 

Corp., 768 F.2d 1001, 1020–21 (9th Cir. 1985); MetroPCS v. Devor, 215 F. Supp. 3d 626, 633 (N.D. 

Ill. 2016) (finding conspiracy liability for “materially different MetroPCS Handsets, removed from 

packaging...devoid of the manufacturer’s warranty.”); see also Motion, Section III.C-I. Indeed, 

Defendants admit the basic facts regarding the formation and operation of the conspiracy in their 

own Motion: “Cali refurbished and repurposed the items that could be refurbished and repurposed, 

and sold them to a distributor, Laguna 2, LLC (“L2”), which marketed them for sale on Groupon as 

refurbished products.” Defendants’ Motion, p. 2:7-10. They have also admitted to their own direct 

involvement in reselling nearly fifteen thousand scrap Fitbit products, which CBP seized as 

counterfeit last year. See Motion, Section III.H. Thus, the undisputed facts, including Defendants’ 

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3615192 12 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

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admissions, confirm that Defendants are liable as co-conspirators and joint tortfeasors for the entire 

infringing distribution chain that they set up and controlled from start to finish. See id., Sections 

III.C.-H; see Rocawear, 2007 WL 5289737 at *6 (C.D. Cal. Sept. 12, 2007). 

Third, Defendants are also vicariously liable for the entire infringing distribution chain 

because they controlled the distribution of scrap products by injecting hundreds of thousands of 

infringing products into the stream of commerce that were ultimately resold to unwitting consumers 

through their conspiracy with Cali and they directly profited from those “joint sales.” See Cali 

Decl., ¶ 5; see Motion, Sections III.C.-I. above; see, also, Fonovisa, Inc. v. Cherry Auction, Inc., 76 

F.3d 259 (9th Cir. 1996) (vicarious liability based on control and direct financial benefit). 

Finally, they are also contributorily liable here. As the Inwood court held, “[e]ven if a 

manufacturer does not directly control others in the chain of distribution, it can be held responsible 

for their infringing activities under certain circumstances.” Inwood, 456 U.S. at 854; see also Louis 

Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936, 942-43 (9th Cir. 2011) (holding 

Akanoc liable where they held the “master switch” for infringement). Here, Defendants continued to 

supply infringing scrap products to Cali with knowledge that those products would be resold to 

consumers. See Lockheed Martin Corp. v. Network Sols., Inc., 194 F.3d 980, 983 (9th Cir. 1999). 

Indeed, they would not have received the millions of dollars in profit they did, if not for the resale of 

these infringing scrap products to consumers, and the undisputed facts show that they were in fact 

well aware that these products were being resold to consumers online, through websites like 

Groupon. See Motion, Sections III.E-F. Accordingly, the undisputed facts, including their control 

of the supply and knowing profit share based on the downstream resale to consumers, easily 

establish contributory liability here. See Coach, Inc. v. Celco Customs Servs. Co., 2014 WL 

12573411, at *17 (C.D. Cal. June 5, 2014) (contributory liability based on inference of knowledge). 

In short, Defendants are jointly and severally, conspiratorially, vicariously, and contributorily 

liable for injecting hundreds of thousands of infringing scrap products into the stream of commerce, 

and profiting off those infringing sales to the tune of millions of dollars. Defendants held the 

“master switch” and could have turned off the supply of infringing goods at any time. Akanoc 

Solutions, 658 F.3d at 942-43. The money was simply too good to do the right thing. 

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3615192 13 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

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4. Fitbit Has Established Likelihood of Confusion 

As a preliminary matter, Defendants do not dispute that the Sleekcraft factors heavily favor 

Fitbit here. See Opp., pp. 17-18; see also Motion, pp. 19:18-23:22. With that concession alone, 

Fitbit has established likelihood of confusion here. See Hatcher, 2011 WL 1225790, at *3. 

Without a valid defense, Defendants unsuccessfully claim there is a battle of experts. Opp., pp. 17-

18. First, Fitbit has established confusion here without expert evidence. Second, even if the Court 

considered expert evidence, that evidence is one-sided. Fitbit’s survey stands unrebutted by Dr. 

Sood, as the only expert evidence regarding confusion. See Motion, Section I; Declaration of Hal 

Poret in Support, filed concurrently with this Reply, ¶¶ 3-17 & Ex. A; see Cahill v. Golden Gate 

Bridge, Highway & Trans. Dist., 2016 WL 1070655, at *5 (N.D. Cal. Mar. 18, 2016) (overruling 

objection to expert report where subsequent sworn declaration remedied any defect). Defendants’ 

marketing expert, Dr. Sood, has no affirmative opinions on confusion, is not a trademark survey 

expert, and his criticisms do not affect the significant and reliable confusion evidence presented 

here, leaving Fitbit’s evidence unrebutted. Opp. at. 18.

C. Federal Unfair Competition and California Unfair Competition 

For the reasons set forth above and in Fitbit’s Motion at Section IV.C., the undisputed 

material facts show that Defendants have violated state and federal unfair competition laws. 

Therefore, the Court should also grant summary judgment on Fitbit’s unfair competition claims. 

See Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1221 (9th Cir. 2012).

D. Defendants’ Final Damages Argument Is Meritless 

Finally, Defendants’ argument that Fitbit must prove damages to be entitled to summary 

judgment on the issue of liability is contrary to federal law. See Hewlett-Packard Co. v. Repeat-0-

Type Stencil Mfg. Corp., 1995 WL 338181, at *3–5 (N.D. Cal. Feb. 7, 1995) (granting summary 

judgment on liability though damages “remain[ed] to be resolved”). Even if that were not the case, 

Defendants conceded in their Opposition to the failing to pay Fitbit 70% of the net proceeds here, 

claiming only that they still have not calculated how much they owe. Opp., p. 12:4-22. 

Regardless, Fitbit has produced ample evidence of the fact of its damages, including from 

Defendants’ infringement, breaches, and harm to Fitbit’s brand and reputation with consumers. 

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3615192 14 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

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Motion, Sections III.C-I. Finally, Fitbit has filed a sworn declaration confirming the expert 

damages calculation to remove any doubt. See Declaration of Greg Regan in Support, filed 

concurrently with this Reply, ¶ 2 & Ex. A; see Cahill, 2016 WL 1070655, at *5. 

III. RESPONSE TO DEFENDANTS’ OBJECTIONS AND JUDICIAL NOTICE 

A. Responses to Defendants’ Evidentiary Objections 1-3 

Defendants object to various statements in the Declarations of Brett Millar (ECF No. 235) 

and Jeff Bonham (ECF No. 236) as lacking foundation and/or hearsay. The Court should overrule 

Defendants’ objections because all of the statements to which Defendants object are statements of 

fact offered by the declarants based on their personal knowledge. See ECF No. 235 at ¶ 2, ECF No. 

236 at ¶ 2; See Jesse A. Verrecchia, et al. v. Darrell Aviss, et al., 2017 WL 9486151, at *5 (C.D. 

Cal. Nov. 8, 2017). And Defendants present no evidence to the contrary. 

B. Responses to Defendants’ Evidentiary Objections 4 [sic]-7 

Defendants also object to Fitbit’s internal business records of customer support cases 

attached as exhibits to the Declaration of Jeff Bonham as hearsay. These objections should be 

overruled because Mr. Bonham declares that he personally reviewed the customer support records 

(ECF No. 236 at ¶¶ 4-9), is familiar with them for his job, and authenticates them as Fitbit’s 

business records. Id.; see Cordas v. Uber Techs., Inc., 228 F. Supp. 3d 985, 989 (N.D. Cal. 2017). 

C. Response to Defendants’ Evidentiary Objection 8 

Defendants then object, as lacking foundation and as hearsay, to Mr. Bonham’s summary of 

the analysis he recently performed on a sample of 100 products recently returned by L2. For the 

reasons discussed above, Defendants’ hearsay objections should be overruled on the same grounds. 

Defendants also contend that Fitbit failed to timely disclose Mr. Bonham’s analysis because a 

related document was first created on April 26, 2018, but not produced until May 24, 2018. Their 

objection should be overruled because the analysis was not completed until the night of May 23, 

2018, the day before Fitbit produced the document, which was still prior to the close of discovery. 

See Supplemental Declaration of Jeff Bonham in Support, filed concurrently with this Reply, ¶ 2. 

D. Responses to Defendants’ Evidentiary Objections 9-11 

Defendants next argue that Fitbit’s expert reports are not admissible (attached as Exhibits 

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3615192 15 Case No. 3:17-cv-00079 EMC (KAW)

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VV, WW, and XX to the Alinder Decl.). First, as confirmed above, Fitbit has more than met its 

burden in its Motion without any expert evidence. Second, Defendants’ argument that the reports 

are unsworn is a technical objection, and is not well-taken, as Fitbit’s Rule 26(a) Expert Witness 

Disclosure asserts that it may use any of those experts at trial, and as the Parties have already 

scheduled expert witness depositions. Third, there is no prejudice to Defendants as all three 

witnesses were properly disclosed, and the reports timely served. And finally, in an abundance of 

caution, and without conceding the legitimacy of Defendants’ objections, Fitbit has concurrently 

filed sworn declarations of its expert witnesses. See Cahill, 2016 WL 1070655, at *5.

E. Motion to Strike RJN and Whitten Declaration Paragraphs 

The Court should strike Paragraphs 7-13 of the Declaration of Matthew Whitten in Support 

of Defendants’ Opposition and Defendants’ Request for Judicial Notice (“RJN”), ECF No. 258, 

and each exhibit thereto as “immaterial, impertinent, or scandalous” on the grounds that the 

Defendants do not even cite to this material in their Opposition and it appears to have been filed for 

an improper purpose. Not only do Defendants fail to reference this material, but Defendants’ 

submissions themselves show that it is immaterial and apparently submitted for an improper 

purpose. See Fed. R. Evid. 401 & 403. Exhibit D shows that the charges referred to were 

dismissed in the furtherance of justice pursuant to Cal. Pen. Code § 1385. RJN, Ex. D. Such a 

dismissal “operates to wipe the slate clean,” such that “[t]he defendant stands as if he had never 

been prosecuted for the charged offense.” People v. Barro, 93 Cal. App. 4th 63, 67 (2001). 

IV. FITBIT’S ADDITIONAL OBJECTIONS TO SOOD DECL. AND OPP. LENGTH 

Fitbit further objects to the Opposition Declaration of Ashish Sood (ECF No. 255), 

including because Dr. Sood does not even claim to have any background or experience with 

trademark surveys (see ECF No. 255, ¶ 2), and therefore, is not qualified to provide any opinions 

regarding the trademark survey implemented by Fitbit’s expert Hal Poret. See Fed. R. Evid. 702. 

Finally, Fitbit objects to Defendants’ Opposition, as it contains two numbered pages at the start of 

the pleading and 25 numbered pages thereafter, in violation of N.D. Cal. Civ. L.R. 7-3(a). 

V. CONCLUSION 

For the foregoing reasons, the Court should grant Fitbit’s Motion in full. 

Case 3:17-cv-00079-EMC Document 262 Filed 06/14/18 Page 20 of 21
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3615192 16 Case No. 3:17-cv-00079 EMC (KAW)

PLAINTIFF FITBIT, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

DATED: June 14, 2018 Respectfully submitted, 

SIDEMAN & BANCROFT LLP 

 By: /s/ Zachary J. Alinder 

 Zachary J. Alinder 

Attorneys for Plaintiff 

FITBIT, INC. 

Case 3:17-cv-00079-EMC Document 262 Filed 06/14/18 Page 21 of 21