Case 6:17-cv-01217-EFM-ADM Document 166 Filed 10/29/21 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
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`Case No. 6:17-cv-01217
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`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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`DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION TO AMEND
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`Case 6:17-cv-01217-EFM-ADM Document 166 Filed 10/29/21 Page 2 of 10
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`The timing of LoganTree’s motion to amend speaks volumes about the true reason behind
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`LoganTree’s attempt to amend its contentions at this late stage of the case.
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`• August 2017 — LoganTree originally accused Garmin Connect when it filed this lawsuit
`in August 2017. See ECF No. 1-4. LoganTree specifically relied on the processor of the
`Garmin Connect servers, in addition to the processor of the accused watches, to satisfy
`the “storing” limitation.
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` •
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` November 2018 —LoganTree dropped its allegations against Garmin Connect in its
`Initial Infringement Contentions and relied solely on the processor within the accused
`watches. ECF No. 158-6.
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` •
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` December 2018 —To avoid a finding of invalidity before the Patent Office and the
`Federal Circuit, LoganTree argued the claims were focused on a single processor located
`within the “portable self-contained movement measuring device” of the claims. ECF No.
`158-8, at 1–2.
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` •
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` April 15, 2020 — LoganTree maintained its position regarding the processor in the
`portable, self-contained device to the Federal Circuit in April 15, 2020. Ex. A, Garmin
`Int’l, Inc. v. LoganTree, LP, Appeal No. 2020-1108, ECF No. 23, at 15–16 (noting the
`microprocessor of claim 1 “must be included in a portable, self-contained device and be
`connected to a movement sensor and a power source also included in the portable, self-
`contained device,” while the processor of claim 20 “must be included in the portable,
`self-contained movement measuring device attached to a body part.”).
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` •
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` March 2021 — LoganTree served its final infringement contentions in March 2021
`where it continued to ignore Garmin Connect and only focus on the single processor
`within the watch. ECF No. 158-5.
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` •
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` May 10, 2021 — Fossil files a motion to dismiss challenging the ’576 Patent as invalid
`under § 101 in the District of Delaware. LoganTree LP v. Fossil Grp., Inc., No. 1:21-cv-
`00385-LPS, ECF Nos. 10-11 (D. Del. May 10, 2021).
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` •
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` June 2, 2021 — LoganTree files opposition to Fossil’s motion, arguing claimed
`invention is not abstract based on unique, improved relationship between the claimed
`device’s internal movement sensor and microprocessor. ECF No. 158-9, at 8–9.
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` •
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` July 1, 2021 — LoganTree files a motion to extend its expert report deadline for
`infringement. See ECF No. 123.
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` •
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` July 2, 2021 — District of Delaware sides with LoganTree rejecting § 101 challenge
`because “the claim is directed to a physical device” “having both a motion sensor and a
`microprocessor,” and that “[t]he specific arrangement between the sensor and the
`microprocessor” was important for patentability. ECF No. 158-10, at 10.
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`Case 6:17-cv-01217-EFM-ADM Document 166 Filed 10/29/21 Page 3 of 10
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`• October 2021 — Having survived its invalidity challenges by focusing on the single
`processor within the portable, self-contained device, LoganTree serves its expert report
`on infringement adding the processor of the Garmin Connect servers to the “detecting”
`and “storing” limitations. ECF No. 160.
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`LoganTree abandoned its early accusations against Garmin Connect in order to make the
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`arguments necessary to save the validity of its patent in multiple forums. LoganTree argued over
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`and over that its claims were new and unique because of the processor and sensor contained within
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`the portable, self-contained unit. Numerous courts and parties have spent thousands of hours and
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`millions of dollars relying on these statements. Having secured the validity of the ’576 Patent,
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`LoganTree now changes its position to buttress its infringement allegations. This type of
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`gamesmanship should not be rewarded by the Court by allowing the requested amendment.
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`No extension of time can cure the prejudice caused by LoganTree. No new expert reports
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`on invalidity can undo what has been done. No number of additional depositions can rectify the
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`inconsistencies caused by LoganTree. And no action this Court can take will allow the Patent
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`Office, the Federal Circuit, and the District of Delaware to reexamine their rulings in light of
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`LoganTree’s shifting sands approach to its processor mapping. The Court should end LoganTree’s
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`games and hold it to the statements it has told the world and to the original theories it expressed in
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`this case by denying its requested amendments.
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`I.
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`ARGUMENT
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`The question of when amendments to infringement contentions should be allowed under
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`the Kansas Local Patent Rules has been addressed by this Court. “[I]ssues concerning the validity
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`and interpretation of local patent rules that are likely to directly affect the substantive patent law
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`theories that may be presented at trial are “intimately involved in the substance of enforcement of
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`the patent right” and must be governed by the law of the Federal circuit.” Digital Ally, Inc. v. Taser
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`Int’l, Inc., No. 16-cv-2032-CM-TJJ, 2018 WL 1138283, at *3-4 (D. Kan. Mar. 2, 2018) (citing O2
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`Case 6:17-cv-01217-EFM-ADM Document 166 Filed 10/29/21 Page 4 of 10
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`Micro Int’l Ltd. V. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006)). “The Court
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`will therefore apply Federal Circuit law in determining whether Defendant has shown good cause
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`under D. Kan. Pat. Rule 3.5(b) to amend its invalidity contentions in this case.” Id. In this regard,
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`“[d]iligence is the critical issue in the good cause” showing that must be made before being allowed
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`to amend contentions. Id., at *4.
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`The good cause analysis “has two subparts: (1) diligence in discovering the basis for
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`amendment; and (2) diligence in seeking amendment once the basis for amendment has been
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`discovered.” Id. As to the former, LoganTree cites nothing but its allegedly reasonable belief that
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`an amendment was not needed. But that is no substitute for diligence and LoganTree cites no
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`authority for excusing a lack of diligence based on its own subjective belief. And even if a
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`reasonable belief were an excuse for diligence, LoganTree made no attempt to substantiate that
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`belief—it did not submit a declaration explaining the basis for its belief, it did not identify any
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`evidence that would suggest it had such a belief, and it has not explained how any such belief
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`should be seen as reasonable. Instead, LoganTree hinges its request on conclusory attorney
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`argument. ECF No. 163, at 4. LoganTree’s own prior actions belie its current arguments.
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`A. LoganTree Initially Pled, then Withdrew, Infringement Allegations that Relied
`Upon Garmin Connect, Thus Leading Garmin to Believe the Theory Had Been
`Abandoned
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`There is no colorable argument that LoganTree could have believed, reasonably or
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`otherwise, that it did not need to amend its contentions to provide Garmin with notice of its
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`allegations against Garmin Connect. Its own Complaint shows why. After dismissal of the Western
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`District of Texas case, and in response to Garmin’s challenges to the sufficiency of its allegations,
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`LoganTree provided a claim chart with its Kansas Complaint. See ECF No. 1-4. In that chart,
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`LoganTree expressly mapped Garmin Connect for the “storing” limitation:
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`Case 6:17-cv-01217-EFM-ADM Document 166 Filed 10/29/21 Page 5 of 10
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`Id. at 11. LoganTree’s mapping of Garmin Connect was a focal point in Garmin’s initial motion
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`to dismiss, where it explained “[t]here is absolutely no identification of where or how Garmin
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`Connect would ‘stor[e] . . . the first time stamp information reflecting a time at which the
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`movement data causing the first user-defined event occurred.” ECF No. 11, at 9. Garmin
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`expressly criticized the sufficiency of this chart, arguing that “LoganTree must identify some
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`feature in Garmin’s Accused Products—in this example, the Forerunner device—showing that
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`time stamp information is stored[.]” Id. at 11 (emphasis added).
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`Given the co-pending arguments it needed to make to sustain validity (as described above),
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`LoganTree removed Garmin Connect from the “storing” limitation in its Initial Infringement
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`Contentions. ECF No. 158-6. Nor did LoganTree map it for the “detecting” limitation. Instead of
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`the processor on Garmin Connect, LoganTree now relied solely on the processor within the self-
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`contained watches that creates and stores a “FIT file” on the watches themselves. See ECF No.
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`158-6, at 10–17. LoganTree had abandoned its theory that Garmin Connect was involved in the
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`“storing” limitation, and never suggested it was involved in the “detecting” limitation. This theory,
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`with the emphasis on the watch’s internal microprocessor, became the central focus of this
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`Case 6:17-cv-01217-EFM-ADM Document 166 Filed 10/29/21 Page 6 of 10
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`litigation, the IPR, and the Delaware litigation over the next two years.1 See ECF No. 158, at 1;
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`ECF No. 158-10. LoganTree’s decision to drop its Garmin Connect theory in favor of its
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`“processor on the watch” theory was plainly an attempt to maintain the validity of its patent. Before
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`its Final Infringement Contentions were due, LoganTree also was defending the validity of its
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`patent in the District of Delaware, where it argued its patent was not abstract because of the unique
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`relationship between the sensor and the processor on the device. ECF No. 158-9, at 8–9 (“The ’576
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`Patent improved upon this process significantly by reconfiguring the unconventional combination
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`of components by requiring [the self-contained] microprocessor to detect when the specific events
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`occurred.”). For this reason, LoganTree maintained is reliance on the watch’s processor in its Final
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`Infringement Contentions where it again eschewed reliance on Garmin Connect for the “detecting”
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`and “storing” limitations. ECF No. 158-5. In light of LoganTree’s motion to amend, it no longer
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`appears to be a coincidence that LoganTree also was seeking to extend its expert report deadline
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`in this case while the validity arguments (that ultimately would conflict with its expert report) were
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`still pending. ECF No. 123. This also explains why LoganTree never conducted a single bit of
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`discovery on Garmin Connect or Goal Streak. See, e.g., Ex. B, LoganTree’s 30(b)(6) Notice.
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`Now that its validity challenges have been put to bed, LoganTree seeks to reintroduce
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`Garmin Connect and its microprocessor for the “storing” and “detecting” limitations. LoganTree’s
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`gamesmanship cannot establish good cause.
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`B. LoganTree Failed to Establish Diligence in Searching For, Finding, and Relying
`on Goal Streak as Part of Its Infringement Theory
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`LoganTree does not even attempt to argue that it previously put Garmin on notice of Goal
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`1 It’s unclear why LoganTree abandoned its theory, but it likely is because LoganTree had
`expressly stated to both the Patent Office and the Federal Circuit that the processor that performs
`the “detecting” and “storing” must be located on the portable, self-contained device and not
`distributed (such as between the watch and Garmin Connect). ECF No. 163-4, Ex. C, at 18–19.
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`Case 6:17-cv-01217-EFM-ADM Document 166 Filed 10/29/21 Page 7 of 10
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`Streak. Instead, LoganTree simply argues that Garmin must have been aware of Goal Streak
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`because it was in Garmin’s source code. That argument is nonsensical. The standard for amending
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`contentions does not bear on whether a defendant is aware of its own products and features. Instead,
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`the question is whether a defendant was put on notice that those features allegedly infringe. Digital
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`Ally, 2018 WL 1138283, at *7 (“Local patent rules are designed to encourage parties to ‘provide
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`early notice of their infringement and invalidity contentions, and to proceed with diligence in
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`amending those contentions when new information comes to light in the course of discovery[.]”)
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`And, if not, whether the plaintiff was diligent in discovering the new theory and seeking to amend
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`its contentions. Id. at *4.
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`Instead of trying to establish diligence, LoganTree suggests that GoalStreak already was
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`included within its infringement contentions. First, LoganTree admitted during the last hearing
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`that Goal Streak cannot be found in the contentions. ECF No. 158-4, at 7:6–8. Second, such an
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`argument is nonsensical because Goal Streak, unlike Daily Step Goals, is not a “user-defined”
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`event based on “user-defined parameters,” as the claim requires. ECF No. 1-3, at Claims 1, 20. It
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`is simply a “counter” that a user can never adjust or set. It is farfetched for LoganTree to suggest
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`this non-user-definable functionality falls within the scope of its existing infringement theory
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`focused solely on user-definable functionality. Throughout this case, the IPR, the Federal Circuit
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`appeal, and the Delaware litigation, LoganTree has consistently applied user-definability in its
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`mapping. To now suggest it believed non-user-definability is encompassed in its current theory is
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`not reasonable.
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`LoganTree’s motives are clear—it needed to maintain its arguments on where the processor
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`was located to sustain validity but, now that it has, LoganTree changed its argument in an attempt
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`to save its infringement case here. This is precisely why LoganTree makes no showing of when it
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`Case 6:17-cv-01217-EFM-ADM Document 166 Filed 10/29/21 Page 8 of 10
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`first became aware of Goal Streak. But even if LoganTree was somehow able to show it did not
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`know of Goal Streak in Garmin’s production and on Garmin’s website, it should have known of
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`Goal Streak before discovery closed. LoganTree’s expert testified that he discussed Goal Streak
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`with LoganTree’s counsel in April/May 2021. Ex. C, Excerpt of Myers (Rough) Depo. Trans., at
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`52:19–53:13. At the absolute latest, LoganTree should have moved to amend back in May 2021.
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`C. Allowing LoganTree to Amend at this Late Stage Would Prejudice Garmin
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`Ample prejudice exists given the state of this case. See Digital Ally, Inc. v. Taser Int’l, Inc.,
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`No. 16-cv-2032-CM-TJJ, 2018 WL 5620654, at *2 (D. Kan. Oct. 30, 2018) (finding prejudice
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`where fact discovery was closed and claim construction was complete because “‘[p]rejudice is
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`typically found when amending contentions stand to disrupt the case schedule or other court
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`orders.’”). The prejudice here, however, is incurable. LoganTree has taken inconsistent positions
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`in multiple judicial forums to maintain the validity of its patent. Garmin, the Patent Office, the
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`Federal Circuit, the District of Delaware, and other litigants relied on the mappings LoganTree
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`advanced to uphold the validity of the ’576 Patent. Now, LoganTree seeks to change those
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`mappings to hopefully resurrect its infringement case. This should not be allowed. The harm has
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`been done. Garmin cannot go back in time to address these new allegations with the Patent
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`Office—it is statutorily barred from doing so. 35 U.S.C. § 315(e)(1). No extension of time or new
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`expert reports can provide a re-do in these forums where Garmin has spent millions of dollars
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`chasing LoganTree’s shifting sands approach to litigation.
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`The Court should end LoganTree’s games and hold them to the statements they have told
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`the world and the original theories they expressed in this case by denying its requested
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`amendments.
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`Case 6:17-cv-01217-EFM-ADM Document 166 Filed 10/29/21 Page 9 of 10
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`Dated: October 29, 2021
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`Respectfully submitted,
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`ERISE IP, P.A.
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`/s/ Adam P. Seitz
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`Adam P. Seitz, KS Bar #21059
`Megan J. Redmond, KS Bar #21999
`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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`Case 6:17-cv-01217-EFM-ADM Document 166 Filed 10/29/21 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on October 29, 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/ Adam P. Seitz
`Adam P. Seitz
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