LOGANTREE LP,
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` Plaintiff,
`vs.
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`GARMIN INTERNATIONAL, INC. and
`GARMIN USA, INC.,
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`Defendants.
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`Case No. 6:17-cv-01217
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`Case 6:17-cv-01217-EFM-ADM Document 130 Filed 07/07/21 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
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`DEFENDANTS’ MEMORANDUM IN SUPPORT OF THEIR
`MOTION FOR PROTECTIVE ORDER TO PREVENT UNNECESSARY PRINTING OF
`COMPLETE BLOCKS OF GARMIN’S SOURCE CODE
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`LoganTree accused forty-one (41) of Garmin’s popular activity and fitness tracking
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`watches of infringement. The only functionality LoganTree accused of infringement is the manual
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`step goal set by the user and the associated step-counting. Garmin made the entirety of its source
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`code for all 41 accused products available for inspection, which LoganTree’s expert reviewed for
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`over 45 hours. After a dispute arose regarding whether LoganTree’s request for printed source
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`code was reasonably necessary under the parties’ Stipulated Protective Order (Dkt. 51, 8), the
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`parties discussed the dispute with the Court. During that hearing, Garmin raised a number of
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`concerns regarding LoganTree’s print request because it sought printing of 75 files of complete
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`source code modules comprising more than 2,600 pages of printed source code. Many of these
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`files were irrelevant, and it was clear that LoganTree was simply requesting printed copies for
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`purposes of reviewing blocks of source code, which is prohibited by the protective order. Id.
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`LoganTree was unable to respond to any of the issues raised by Garmin, and simply argued its
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`expert needed all the requested pages printed. In response to questions from the Court, Garmin
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`then agreed to print the relevant pages of the code and produce them to LoganTree. Dkt. 116.
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`Case 6:17-cv-01217-EFM-ADM Document 130 Filed 07/07/21 Page 2 of 9
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`Per the Court’s Order, Garmin worked with its software engineer responsible for this code
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`to identify and print the portions of the code relevant to the accused functionality.1 After verifying
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`it had identified the relevant portions of the code, Garmin then promptly printed and sent the
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`printed pages of code to LoganTree. See Dkt. 120, ¶ 5. Despite receiving the relevant code,
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`LoganTree repeated its original request for printing of all 75 files of complete source code
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`modules—over 2,600 pages of printed code. LoganTree’s voluminous print request includes
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`functionalities within Garmin’s watches that are not accused of infringement—heartrate tracking,
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`distance calculations, calorie tracking, sleep tracking, and simulation code for testing—as well as
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`code relating to unaccused products. LoganTree cannot plausibly contend this code is “reasonably
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`necessary” for the preparation of its expert report. And this is why LoganTree (and, apparently, its
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`expert) broadly contends the code is necessary for some unspecified “context” without explaining
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`why the step-counting code Garmin printed is insufficient or lacking. Accordingly, pursuant to this
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`Court’s Order (Dkt. 122), Garmin moves for a protective order and requests this Court deny
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`LoganTree’s request to print unnecessary, voluminous pages of whole source code modules.
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`I.
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`ARGUMENT
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`A. Garmin Printed the Relevant Code
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`In compliance with the Court’s Order, Garmin provided LoganTree with print outs of the
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`code related to the only functionality accused of infringement, namely, Garmin’s step-counting
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`functionality. Ex. A, Appendix A to Final Infringement Contentions, at 9–17. To accomplish this
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`task Garmin enlisted the assistance of its 30(b)(6) code designee, Robert Blair, to help identify the
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`1 This Garmin engineer was the same witness that Garmin designated as its 30(b)(6) witness
`regarding the source code, and the same witness LoganTree deposed. Notably, at that deposition,
`LoganTree failed to ask Garmin's witness to identify the relevant portions of the code or even ask
`any questions about the source code at all.
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`2
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`Case 6:17-cv-01217-EFM-ADM Document 130 Filed 07/07/21 Page 3 of 9
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`relevant code. Mr. Blair is one of Garmin’s high-level software engineers responsible for writing
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`and maintaining the activity tracking modules within the source code that are responsible for the
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`step-counting logic. Ex. B, Robert Blair Deposition Transcript, 8:2–9:23. Given Mr. Blair’s
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`intimate knowledge of the code, Mr. Blair helped Garmin verify the portions it slated for printing
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`were the portions of the code relating to the step-counting functionality (including the writing of
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`timestamps). This code was then printed and provided to LoganTree.2 Notably, LoganTree does
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`not dispute the relevant disclosure of the step-counting and timestamp code produced by Garmin.
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`This is likely because the timestamps do not implicate much volume of source code, which is not
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`disputed by LoganTree. Ex. C, Transcript of June 8, 2021 Discovery Hearing, 16:1–11; 19–21.
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`LoganTree instead contended that Garmin failed to include information about from where
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`code originated, and that it could not determine to what the lines of printed code related. But this
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`contention is not accurate. First, Garmin included file path information on each page of printed
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`code. An example of the file paths on a few pages from Garmin’s printed source code are
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`reproduced and included in sealed Ex. D (file path annotated in red). Second, LoganTree’s expert
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`should have notes from his lengthy review on why each module of code is necessary and relevant,
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`which is why the Protective Order allows note taking during code review. Dkt. 51, at ¶ 7(c)(12).
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`If not, and he is seeking to do another in-depth review, then LoganTree is seeking to do precisely
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`what the Protective Order says it cannot do—use paper copies of block of code to review. Dkt 51,
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`8 (party “shall not request paper copies for the purpose of reviewing blocks of the Source Code”).
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`Finally, as explained in more detail below, LoganTree had the opportunity to ask Garmin’s
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`30(b)(6) witness any questions it had about Garmin’s source code. LoganTree chose not to ask a
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`2 Garmin will make its printed portions of source code available to the Court for an in camera
`review if necessary.
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`3
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`Case 6:17-cv-01217-EFM-ADM Document 130 Filed 07/07/21 Page 4 of 9
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`single question about the actual source code during the deposition. Ex. B. Garmin should not be
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`forced to print voluminous copies of its source code so LoganTree can answers questions it should
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`have addressed through other, less prejudicial means of discovery.
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`B. LoganTree had Ample Time to Review the Code, Depose Garmin’s Witness, and
`Identify the “Targeted Lines of Code” it Believes are Missing
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`LoganTree served its final infringement contentions and deposed Garmin’s 30(b)(6) source
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`code witness without having ever reviewed Garmin’s source code that was available for inspection
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`starting in November 2019, some 20 months before LoganTree reviewed it. Ex E, Garmin’s
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`Objections and Responses to First Set of Requests for Production, 7. It was not until 12 days before
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`the end of discovery that LoganTree finally decided to review Garmin’s source code. After a 45-
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`hour review of Garmin’s source code files, LoganTree’s expert, Mr. Myers, completed his review
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`of the code and did not request any further code review.
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`As noted above, Garmin produced Mr. Blair as its corporate designee regarding the design,
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`development, functionality, operation of the Accused Products. Ex. B, 10:19–21; id. at Ex. A
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`(Topics 1–3). Mr. Blair was prepared to answer questions regarding Garmin’s source code. Id. at
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`6:19–25 (noting Mr. Blair had reviewed source code to prepare for his deposition). If LoganTree
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`had questions about the code, LoganTree was free to raise those issues during Mr. Blair’s
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`deposition. That would have been the appropriate time for LoganTree to ensure it had identified
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`the code necessary for preparing its expert report and clarifying any confusion it may have about
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`how Garmin’s code works.3 Inexplicably, LoganTree did not ask Mr. Blair a single question about
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`3 The timing of LoganTree’s code review and Mr. Blair’s deposition is a problem of LoganTree’s
`own making. Given LoganTree’s silence, Garmin had to raise the issue of Garmin’s witness
`depositions in April 2021. Ex. F, 4/12/21 M. Redmond Email to C. Barkley. The source code has
`been available since November 2019 (Ex. E) and could have been reviewed well in advance of
`Mr. Blair’s deposition, though LoganTree chose to wait until May 2021 to request a review of the
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`4
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`Case 6:17-cv-01217-EFM-ADM Document 130 Filed 07/07/21 Page 5 of 9
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`the source code files, never asked for help in identifying the relevant files, and did not even use
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`the source code as an exhibit. Ex. B. Despite these opportunities to obtain the information
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`LoganTree contends it needs, it failed to do so. Now LoganTree appears to be attempting to
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`circumvent the Protective Order to improperly conduct a review via paper copies of the code.
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`The Protective Order requires that printed copies of source code shall only be of “limited
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`portions of Source Code that are reasonably necessary for the preparation of … expert reports.”
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`Dkt. 51, 8. And during the last hearing, the Court instructed LoganTree that its expert would need
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`to “come back and identify more targeted lines of code that he really does believe are necessary.”
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`Ex. C, 19:4–6 (“[Mr. Meyers] is going to have to come back and identify more targeted lines of
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`code that he really does believe are necessary”). To date, LoganTree has been unable to identify
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`the targeted portions of code it believes are missing from the printed files provided by Garmin.
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`LoganTree’s failure to specifically identify what it needs is not for lack of opportunity.
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`LoganTree’s renewed request repeats the same generic request for code. Despite having
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`many chances to identify the specific portions of code it believes are necessary, LoganTree broadly
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`renews its request for the same 75 files of complete source code modules. Dkt. 120-2, ¶ 1.
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`LoganTree explains its request as “limited in nature taking into account the millions of lines of
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`source code produced by Garmin for review” and that they are necessary for “context.” Id., at ¶¶
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`6, 10–11. But this “context” does not explain why LoganTree or its expert needs code relating to
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`unaccused functionalities and unaccused products. And LoganTree provided no detail, let alone
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`the detail requested by the Court, as to why all this code was reasonably necessary. Ex. C, 18:24–
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`19:22.
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`code. Ex. G, 5/3/21 C. Barkley Email to C. Brazen. Similarly, LoganTree could have deposed Mr.
`Blair after concluding its code review.
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`Case 6:17-cv-01217-EFM-ADM Document 130 Filed 07/07/21 Page 6 of 9
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`As noted in the last hearing, LoganTree’s requested code files include portions of code
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`relating to numerous unaccused functionalities such as: calorie tracking, sleep tracking, simulation
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`of accelerometer signals, internal product testing, heart rate tracking, and distance counting and
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`tracking. Ex. C, 11–12. LoganTree’s request even includes code for products—such as the vivofit
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`4—that are not accused of infringement. Id. at 11. LoganTree’s “context” argument cannot justify
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`discovery into products and functionalities that are not relevant to the litigation.
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`C. The Protective Order Precludes Block Review of Paper Copies of Source Code
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`At its core, LoganTree’s inability to cite specific code that is missing along with its
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`argument that blocks of code are necessary for “context” is nothing more than pretext for allowing
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`its expert more time to review the code to understand how it operates. Dkt. 120-2, ¶ 13. This is, of
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`course, expressly precluded by the Protective Order, which prevents “request[ing] paper copies for
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`the purpose of reviewing blocks of the Source Code” and only permits requesting paper copies of
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`“limited portions of Source Code that are reasonably necessary for the preparation of court filings,
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`pleadings, expert reports, or other papers, or for deposition or trial.” Dkt. 51, ¶ 7(c)(8).
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`A similar request for “context” was denied in the case of Digital Reg of Texas, LLC v.
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`Adobe Systems Inc., 2013 WL 633406 (N.D. Cal. Feb. 20, 2013). The governing protective order
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`in Digital Reg restricted source code printouts to “limited portions of source code that are
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`reasonably necessary for the preparation of court filings, pleadings, expert reports, or other
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`papers,” and further clarified requests for printouts should not be made “for the purposes of
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`reviewing the source code.” Id. at *6. But the plaintiff requested “source code printouts of 14
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`complete files” for, in part, “context.” Id. The Court denied plaintiff’s request. Id. at *7.
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`LoganTree’s request is even broader and should similarly be denied.
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`LoganTree’s “context” arguments do not stand up to scrutiny. For example, LoganTree
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`Case 6:17-cv-01217-EFM-ADM Document 130 Filed 07/07/21 Page 7 of 9
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`argues it needs the requested contextual code to “determine which source codes that were requested
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`were printed out” so that it can “match the exact source code to the specific accused product or
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`module relating to that product.” Dkt. 120-2, ¶ 10. LoganTree is already in possession of this
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`information. Garmin’s production of printed code includes the file paths for the selected code. Ex.
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`D (annotated in red). There is no reason LoganTree cannot compare the printed code to the data
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`provided by Garmin to obtain the information it claims is missing. Importantly, LoganTree’s
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`expert does not explain why this is not possible or why his notes fail to reflect these associations.
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`D. Garmin Will Be Harmed if its Code is Disclosed
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`At the last hearing, the Court noted the possible harm to Garmin and the sensitive nature
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`of printing large amounts of source code. Ex. C, 18:19–21 (noting “the risks associated with having
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`unnecessary copies of source code floating around and the things that can be done with that source
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`code”). Garmin’s source code is very sensitive and valuable and provides Garmin the ability to
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`maintain its position as a market leader in the fitness space in large part due to the work of its
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`engineers in designing award winning products and software. Garmin’s source code is not “open
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`source” and is not otherwise made available to the public. If entire source code modules—such as
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`those requested by LoganTree—were to be publicly disclosed, a competitor would almost
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`immediately be able to bring a knock-off product to market forcing Garmin to compete against
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`itself. This risk is just as great even for inadvertent disclosures. Unwired Planet LLC v. Apple Inc.,
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`No. 3:12-CV-00505-RCJ (VPC), 2013 WL 1501489, at *5 (D. Nev. Apr. 11, 2013). Despite the
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`parties best efforts, mistakes often happen even in the transportation or storage of the paper copies
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`of the source code as noted by this Court. Ex. C, 18:1–13. LoganTree’s desire for “context” should
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`not be allowed to override the irreparable harm to which Garmin would be subject if its source
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`code were disclosed to the public.
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`Case 6:17-cv-01217-EFM-ADM Document 130 Filed 07/07/21 Page 8 of 9
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`Dated: July 7, 2021
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`Respectfully submitted,
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`ERISE IP, P.A.
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`/s/ Megan J. Redmond
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`Megan J. Redmond, KS Bar #21999
`Adam P. Seitz, KS Bar #21059
`Carrie A Bader, KS Bar #24436
`Clifford T. Brazen, KS Bar #27408
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`adam.seitz@eriseip.com
`megan.redmond@eriseip.com
`carrie.bader@eriseip.com
`cliff.brazen@eriseip.com
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`Attorneys for Defendants Garmin
`International, Inc. and Garmin USA, Inc.
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`8
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`Case 6:17-cv-01217-EFM-ADM Document 130 Filed 07/07/21 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on July 7, 2021, the foregoing document filed with the Clerk of the
`Court using CM/ECF and that all counsel of record who are deemed to have consented to electronic
`service are being served with a copy of this document via the Court’s CM/ECF system accordingly.
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`By: /s/ Megan J. Redmond
`Megan J. Redmond
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`9
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