Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 1 of 36
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
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`LOGANTREE LP,
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`Plaintiff,
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`v.
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`GARMIN INTERNATIONAL, INC.,
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`Defendant.
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` Case No. 17-1217-EFM-ADM
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`MEMORANDUM AND ORDER
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`In this patent infringement case, plaintiff LoganTree LP (“LoganTree”) accuses dozens of
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`models of defendant Garmin International, Inc.’s (“Garmin”) activity trackers of infringement.
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`This matter is now before the court on the parties’ dispute over the scope of LoganTree’s
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`infringement expert report, which Garmin contends advances new theories that LoganTree did not
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`disclose in its infringement contentions. Garmin moves to strike these infringement theories.
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`(ECF 157.) LoganTree disagrees and says the expert report does not disclose new infringement
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`theories, but instead merely cites additional evidence to support LoganTree’s existing infringement
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`theories. To the extent the court disagrees, LoganTree seeks to amend its infringement contentions
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`so that its expert report is commensurate in scope. (ECF 162.) For the reasons explained below,
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`the court finds that LoganTree’s expert relies on new infringement theories that LoganTree did not
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`disclose in its infringement contentions, LoganTree has not shown good cause to amend its
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`infringement contentions, and other considerations weigh against allowing LoganTree to belatedly
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`add these new infringement theories. Accordingly, LoganTree’s motion to amend is denied, and
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`Garmin’s motion to strike is granted.
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`

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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 2 of 36
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`I.
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`BACKGROUND
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`A.
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`The ‘576 Patent
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`LoganTree’s complaint alleges that it is the owner by assignment of all right, title, and
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`interest in U.S. Patent No. 6,059,576, entitled “Training and Safety Device, System and Method
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`to Aid in Proper Movement During Physical Activity.” (ECF 1 ¶¶ 12-15, at 4.) LoganTree alleges
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`the patent generally relates to a device invented by Theodore Brann to measure, analyze, and
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`record data about the wearer’s body movements using an accelerometer, programmable
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`microprocessor, internal clock, and memory. (Id. ¶ 16, at 4.) Before LoganTree filed suit against
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`Garmin, it initiated a reexamination of the patent. On March 17, 2015, the United States Patent &
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`Trademark Office (“PTO”) issued a reexamination certificate with amended claims. (ECF 1-3.)
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`The court will refer to the reexamined patent as “the ‘576 Patent.”
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`LoganTree asserts that Garmin infringes two independent claims—Claim 1, a device claim,
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`and Claim 20, a method claim—and other claims that are dependent on Claims 1 and 20.
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`Independent device Claim 1 is as follows:
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`1. A portable, self-contained device for monitoring movement
`of body parts during physical activity, said device comprising:
`a movement sensor capable of measuring data associated with
`unrestrained movement in any direction and generating signals
`indicative of said movement;
`a power source;
`a microprocessor connected to said movement sensor and to said
`power source, said microprocessor capable of receiving, storing and
`responding to said movement data based on user-defined operational
`parameters, detecting a first user-defined event based on the
`movement data and at least one of the user-defined operational
`parameters regarding the movement data, and storing first event
`information related to the detected first user-defined event along
`with first time stamp information reflecting a time at which the
`movement data causing the first user-defined event occurred;
`at least one user input connected to said microprocessor for
`controlling operation of the device;
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`2
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`

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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 3 of 36
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`a real-time clock connected to said microprocessor; memory for
`storing said movement data; and
`an output indicator connected to said microprocessor for
`signaling the occurrence of user-defined events;
`wherein said movement sensor measures the angle and velocity
`of said movement.
`
`(Id. at 3.) Independent method Claim 20 is as follows:
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`20. A method to monitor physical movement of a body part
`comprising the steps of:
`attaching a portable, self-contained movement measuring device
`to said body part for measuring unrestrained movement in any
`direction;
`measuring data associated with said physical movement;
`interpreting, using a microprocessor included in the portable, self-
`contained movement measuring device, said physical movement
`data based on user-defined operational parameters and a real-time
`clock;
`storing said data in memory;
`detecting, using the microprocessor, a first user-defined event
`based on the movement data and at least one of the user-defined
`operational parameters regarding the movement data; and
`storing, in said memory, first event information related to the
`detected first user-defined event along with first time stamp
`information reflecting a time at which the movement data causing
`the first user-defined event occurred.
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`(Id. (emphasis added).) LoganTree added the italicized language during reexamination.
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`B.
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`The Parties’ Infringement & Non-Infringement Contentions
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`LoganTree’s complaint accuses dozens of models of Garmin’s wearable accelerometer-
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`based activity trackers (the “Accused Products”) of infringement. From the outset, one of
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`Garmin’s main non-infringement positions has focused on the claim language italicized above,
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`which Garmin says LoganTree added during reexamination of the ‘576 Patent to narrow the claims
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`to overcome the prior art. (ECF 11.) Specifically, LoganTree added the following language to
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`both asserted independent claims:
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`3
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`

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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 4 of 36
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`• “detecting[, using the microprocessor,] a first user-defined event based on the
`movement data and at least one of the user-defined operational parameters regarding
`the movement data,” and
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`• “storing[, in said memory,] first event information related to the detected first user-
`defined event along with first time stamp information reflecting a time at which the
`movement data causing the first user-defined event occurred.”
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`(ECF 11, at 4-5 (bracketed language in Claim 20 but not in Claim 1).)
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`
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`Garmin initially moved to dismiss LoganTree’s complaint under Federal Rule of Civil
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`Procedure 12(b)(6) on the grounds that LoganTree had not adequately pleaded that the Accused
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`Products plausibly meet the so-called “storing” limitation—i.e., that the microprocessor in the
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`portable, self-contained device (the Accused Products) records a time stamp when the first user-
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`defined event occurs. (ECF 10.) Garmin pointed out that the claim chart attached to LoganTree’s
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`complaint referred to Garmin Connect as a program that allows a user to review time data but did
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`not identify any way in which the Accused Products store a time stamp when a particular activity
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`(i.e., “movement data causing the first user-defined event”) occurs. (Id. at 10-11.) The court
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`ultimately denied Garmin’s Rule 12(b)(6) motion on the grounds that LoganTree’s allegations
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`were sufficient to meet Iqbal/Twombly pleading standards. (ECF 22.)
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`Meanwhile, Garmin filed a petition for inter partes review (“IPR”) of the ‘576 Patent,
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`which the Patent Trial and Appeal Board (“PTAB”) granted on August 30, 2018. (ECF 33-1.)
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`The court then stayed this case pending IPR through most of 2019. (ECF 37.)
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`After the IPR proceedings were complete, discovery opened on October 1, 2019. See FED.
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`R. CIV. P. 26(d)(1) (parties may seek discovery after the Rule 26(f) conference). (ECF 42 (setting
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`October 1 as the deadline for the Rule 26(f) conference).) The scheduling order required
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`LoganTree to serve its infringement contentions on November 1, 2019. (ECF 48, at 3.) When
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`LoganTree did so, it omitted any reference to Garmin Connect for the “storing” limitation. (ECF
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`158-6.) The contentions referred to Garmin Connect to set the “user-defined operational
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`4
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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 5 of 36
`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 5 of 36
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`parameters” by pointing out that a user who did not want to use the automatic daily-step-goal
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`feature could instead set a personalized goal via the user’s Garmin Connect account.
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`Auto Goal
`Your device creates a daily step goal automatically, based on
`your previousactivity levels. As you move during the day, the
`device shows your progress toward your daily goal
`(7).
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`based onuser-
`defined
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`operational
`parameters
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`personalized step goal on your Garmin Connect account.
`movement data
`
`a
`n
`r
`h
`
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`Jfivouchoosenottousetheautogoalfeature,voucanseta
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`(d. at 18.) But LoganTree’s contentions no longer referred to Garmin Connectfor the “detecting”
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`and “storing” limitations.
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`(/d. at 19-26.)
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`Instead, LoganTree claimed that the “detecting a first
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`user-defined event” limitation was met by showing an Accused Product display monitor showing
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`the user had methis or her daily step-count goal:
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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 6 of 36
`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 6 of 36
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`(d. at 19.) And LoganTree contendedthatthe “storing first event information”limitation was met
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`by storing certain information on a .FIT file on the Garmin device:
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`storingfirst event
`information
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`Fenix 5. These files are accessible when connected to a USB port of a computer.
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`Organize ¥
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`Share with ¥
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`(D:)
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`Name
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`Date modified
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`Type
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`oe
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`
`
`|_| M1SM3940.FIT 1/28/201910:39 PM~~s«*FIT File
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`)) ACTIMITY
`)) ADJSTMTS
`i APPS
`)) CHNGLOG
`
`__| M1SM2435.FIT
`
`1
`
`28/2019 10:24PM FTFile
`
`|_| M1SM1852.FIT
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`/28/201910:18 PM AAT File
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`__| M1S00000.FIT
`
`(28/2019 12:00 AM
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`|_| MIRA2556,
`KAT MINOW PITT
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`Comment: Monitordata is stored in a .FIT file in the MONITORfolderin the Garmin
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`(d. at 20-26.)
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`Theparties proceeded withinitial discovery and claim construction proceedings. The court
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`issued a Markmanorder on January 19, 2021.
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`(ECF 106.) The main disputed claim limitation
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`wasthe portionof the “storing” limitation requiring “first time stamp information reflecting a time
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`at which the movement data causing the first user-defined event occurred.” (/d. at 7-9 (emphasis
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`added).) The court largely agreed with Garmin’s proposed construction and construed this
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`

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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 7 of 36
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`limitation to mean “first time stamp information recorded or noted by the system at which the
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`movement data causing the first user-defined event occurred.” (Id. at 9 (emphasis added).)
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`Shortly after the court’s claim construction order, Garmin asked LoganTree to dismiss the
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`case in light of the court’s claim construction. (ECF 158-2, at 2.) Garmin pointed out that
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`LoganTree’s infringement contentions identify the “first user-defined event” as a step-goal set by
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`the user, but that the Accused Products never record the time (a timestamp) at which the user
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`reaches its step goal. (Id. at 3-4.) Specifically, LoganTree’s infringement contentions show that
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`.FIT monitoring messages are logged at intervals (e.g., every 60 seconds) rather than being tied to
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`the user reaching a step goal. (Id. at 4-7.) Garmin pointed out that the “stored event information”
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`in LoganTree’s infringement contentions identify a time “prior to the user meeting the step goal,
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`not the time at which the user met the step goal,” which is at odds with the court’s claim
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`construction. (Id. at 3-4 (emphasis in original).) According to Garmin, “given the operation of
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`the Garmin system—which never records a timestamp based on a user meeting a step goal—
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`LoganTree will never be able to meet the Court’s claim language and maintain its infringement
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`allegations.” (Id.) Garmin therefore asked LoganTree to dismiss its case or Garmin would “seek
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`fees, costs, and all other appropriate remedies for an exceptional case that lacks any good faith
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`basis to proceed.” (Id.)
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`On February 12, the court reconvened a scheduling conference to discuss remaining case-
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`management deadlines. The amended scheduling order required the parties to serve their final
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`contentions by March 15 (infringement) and April 15 (invalidity), complete fact discovery by May
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`18, serve initial expert disclosures by July 5 and rebuttal expert disclosures by August 20, and
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`complete expert discovery by September 13. (ECF 110, at 2.) Further, it set the pretrial conference
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`on September 24 and a dispositive motions deadline of October 13. (Id.)
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`7
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`

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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 8 of 36
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`Despite Garmin’s position that LoganTree lacked any good faith basis to proceed in view
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`of the court’s claim construction, LoganTree doubled down on its existing infringement theories.
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`It served its final infringement contentions on March 15 and (for reasons not apparent to the court)
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`revised infringement contentions on March 31.1 (ECF 111, 113.) Those contentions were
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`materially identical (for purposes of the current motion) to the ones LoganTree had previously
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`served in November of 2019. LoganTree continued to advance the same infringement theories—
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`that the “first user-defined event” is a step goal set by the user, that the “detecting” limitation is
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`met by the device detecting the user meeting the step goal, and that the “storing” limitation is met
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`by storing the time that the user meets the step goal on the .FIT file on the device itself. (ECF 158-
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`5, at 18-26.)
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`C.
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`LoganTree’s Dispute Over Source Code Printouts Derailed the Case Schedule,
`Including Delaying Infringement Expert Disclosures
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`As the deadline for fact discovery approached, discovery became mired in delays because
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`of disputes regarding the extent to which Garmin was required to produce printout copies of its
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`source code, as detailed in the court’s prior order on the issue. See generally LoganTree LP v.
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`Garmin Int’l, Inc., 339 F.R.D. 171 (D. Kan. 2021) (setting out the history giving rise to the dispute
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`and ruling on competing discovery motions). That order summarized LoganTree’s lack of
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`diligence in pursuing discovery regarding Garmin’s source code, leading to a belated discovery
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`dispute that ultimately derailed the case schedule. Garmin had made its source code available for
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`inspection in November 2019. Id. at 176. Seventeen months later, the month before fact discovery
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`was set to close, LoganTree still had not inspected the source code in April 2021. Id. Garmin’s
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`1 All references to LoganTree’s final infringement contentions are to the March 15 version that
`Garmin attached as an exhibit to its motion. (ECF 158-5.)
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`8
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`

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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 9 of 36
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`counsel began prodding LoganTree about this, and LoganTree’s expert finally inspected the source
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`code on May 6 and May 10-14, just days before fact discovery closed on May 18. Id.
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`At this point, the parties’ dispute over source code printouts began. LoganTree requested
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`printouts of 75 files of complete source code modules totaling more than 2,600 pages of printed
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`source code. Id. Garmin objected on the grounds that this request was too broad and violated the
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`protective order provision regarding source code printouts. Id. at 176-77. At a pre-motion
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`discovery conference on June 8, the parties agreed to try to narrow the areas of disagreement for
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`motion practice by Garmin first producing source code printouts relating to the accused step-
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`counting functionality, then the parties would meet and confer to see if they still wanted to proceed
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`with motion practice. Id. at 177. The court ordered LoganTree, after reviewing these printed
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`pages, to notify Garmin as to what additional pages, if any, LoganTree still wanted Garmin to
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`produce so the parties would know the scope of their remaining areas of disagreement for motion
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`practice. Id. The court also set deadlines for the parties to file cross motions, with LoganTree
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`filing a motion to compel and Garmin filing a motion for protective order. Id. The court expressed
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`concerns that LoganTree’s request was too broad and said it would expect LoganTree to provide
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`a more robust explanation if the dispute came to motion practice. Id.
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`The following week, Garmin produced 207 pages of source code relating to the accused
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`step-counting functionality. Id. at 177-78. LoganTree missed several subsequent deadlines (id.),
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`and eventually filed a motion for leave to file a motion to compel out of time, attaching a proposed
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`motion to compel as an exhibit (ECF 120 & 120-2). The motion to compel still sought production
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`of the entire 2,600+ pages of source code printouts that LoganTree initially requested. (ECF 120-
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`2, at 6.) This filing placed the burden on Garmin (under the protective order) to seek a protective
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`order shielding it from this discovery request, so Garmin filed that motion. (ECF 129.) LoganTree
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`9
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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 10 of 36
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`then moved to extend the July 5 deadline to serve initial expert disclosures pending an order on its
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`motion to compel. (ECF 123.) The court cautioned LoganTree that it should not assume the
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`motion would be granted (ECF 135, at 1), but LoganTree did just that. It did not serve any
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`infringement expert disclosure—even one that could be supplemented if the court granted the
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`motion to compel. See LoganTree, 339 F.R.D. at 187 (“After all, LoganTree’s expert report cannot
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`properly go beyond the scope of LoganTree’s final infringement contentions, which LoganTree
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`served in March of 2021 before reviewing Garmin’s source code. So LoganTree could have met
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`the deadline but apparently decided not to do so[.]”).
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`Ultimately, the court denied LoganTree’s motion to compel and granted Garmin’s motion
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`for a protective order. The court found that LoganTree did not meet and confer in good faith with
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`Garmin before forcing motion practice and continued to rely on boilerplate claims of need without
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`going beyond broad generalities. Id. at 179-80. The court noted that “LoganTree had ample time
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`and numerous opportunities to narrow its request and/or to articulate a more specific explanation
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`as to why its expert needs source code for more than the accused functionality” but that it had not
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`done so. Id. at 179. Moreover, LoganTree’s inaction and delay set off a domino effect of delays
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`that stalled progression of the case:
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`LoganTree waited more than 18 months to review the source code—
`after claim construction, after service of its final infringement
`contentions, and after Garmin’s counsel prodded LoganTree to
`come review the source code. LoganTree waited until less than two
`weeks before the close of fact discovery to begin reviewing the
`source code and then did not ask Garmin’s Rule 30(b)(6) source
`code witness any questions about the source code. LoganTree then
`launched an eleventh-hour dispute over production of printouts by
`making a meritless demand for 2,600+ pages of source code and
`failed to engage in the required meet-and-confer process with
`Garmin, as discussed above. All of this has not only delayed
`briefing on and resolution of the parties’ dispute over source code
`printouts, but LoganTree also used this unresolved issue to justify
`not serving its infringement expert disclosures by the July 5
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`10
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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 11 of 36
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`deadline, which the court must now reset along with the other
`scheduling order deadlines as explained below.
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`Id. at 180-81. In ruling on the parties’ motions, the court set forth a procedure to resolve lingering
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`disputes about source code production and, in doing so, granted LoganTree additional time to serve
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`its infringement expert report. Id. at 186-87. The court did so not because LoganTree had shown
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`good cause for the extension, but rather because not allowing LoganTree to serve the report would
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`amount to a dispositive sanction in that LoganTree would not be able to meet its burden to prove
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`infringement—an issue on which it must present expert testimony. Id. at 188. The court gave the
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`parties additional time to further meet and confer and set a hearing to take up any remaining source
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`code printout disputes and to reset case management deadlines. Id.
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`
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`On September 2, Garmin moved to vacate these deadlines because of the then-recent death
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`of LoganTree’s principal and the inventor of the ‘576 Patent, Brann, and because the parties
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`claimed they were making progress on meet-and-confer efforts. (ECF 140.) LoganTree joined in
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`requesting the same relief. (ECF 142.) But the court denied the motion without prejudice because
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`the parties had not demonstrated good cause by showing that they could not have met the existing
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`deadlines if they had acted with diligence. (ECF 143, at 5.) The court also reimposed case-
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`management deadlines, including requiring the parties to substantially complete expert discovery
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`by October 29, setting a final pretrial conference on November 16, requiring the parties to submit
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`a proposed pretrial order by November 9, and setting a December 7 deadline for dispositive
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`motions. (Id. at 7.) And the court directed the parties to submit a proposed schedule to complete
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`expert discovery. (Id.) When the parties did so, the court adopted their proposed deadlines and
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`agreed-upon dates for remaining depositions. (ECF 145, at 2; ECF 149.)
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`11
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`

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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 12 of 36
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`C.
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`LoganTree’s Infringement Expert Disclosure
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`On October 8, LoganTree served the report of its infringement expert, Monty Myers—
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`more than three months late. Myers continues to identify a “first user-defined event” as the daily
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`step-count goal set by the user, either via the Garmin Connect app or the connect.garmin.com
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`website. (ECF 160, at 7-10, 37-40.) Myers explains that the user device (e.g., the Fenix 5)
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`regularly and systematically checks whether the accumulated steps during the current day exceed
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`the user-defined daily step count goal. (Id. at 10, 40.) And, once that daily step goal is met, the
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`user is visually notified on the face of the watch that the goal was met. (Id. at 10-11, 40-41.)
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`Furthermore, the device logs information in the .FIT file relating to when the step goal is reached.
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`(Id. at 16.) The parties do not dispute that these opinions are consistent with LoganTree’s
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`infringement contentions.
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`But Garmin contends that Myers’ report expands these allegations and raises new
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`infringement theories that were not in LoganTree’s infringement contentions. Specifically, Myers
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`relies on a feature called “Goal Streak” that keeps track of (i.e., updates and stores) the number of
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`consecutive days the user achieves his or her daily step goal. (ECF 160, at 7, 14, 37, 44.) Myers
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`also relies on the Garmin Connect app and website to meet the “detecting” and “storing”
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`limitations. He says the .FIT file data recorded by the device is transferred to Garmin Connect.
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`(Id. at 11, 13, 16-18, 41-43, 47-48.) He then points to and relies on several screenshots from the
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`Garmin Connect app and website showing: (1) the user met the step goal; (2) a check mark placed
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`along a timeline showing the 15-minute interval when the user achieved his or her step goal; and
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`(3) the user met the step goal multiple times in a given day. (Id. at 12-14, 40-44, 48-50.) Garmin
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`asks the court to strike these new infringement theories from Myers’ report.
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`12
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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 13 of 36
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`In response, LoganTree contends that it has consistently alleged that the microprocessor in
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`the Accused Products detect and store a timestamp associated with a user-defined event and that
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`Myers does not offer new infringement theories. LoganTree characterizes Myers as offering
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`“additional evidence proving the infringement theories LoganTree has consistently asserted
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`throughout this case.” (ECF 167, at 1-2.) LoganTree therefore maintains, first and foremost, that
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`Myers does not assert new infringement theories and thus LoganTree does not need to amend its
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`infringement contentions. During the pre-motion discovery conference on October 19, the court
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`expressed skepticism about this position. (ECF 158-4, at 4:12-15, 7:6-8:12.) As a result, and in
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`order to avoid delays associated with unnecessarily protracted briefing at this late stage of the
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`case,2 the court imposed a deadline for LoganTree to file any motion to amend its infringement
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`contentions that it may wish to file. (ECF 153.) Given the court’s comments, LoganTree filed
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`that motion to amend “out of an abundance of caution,” so that LoganTree’s infringement
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`contentions are commensurate with Myers’ report. (ECF 163, at 3-4.)
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`II.
`
`THE PATENT LOCAL RULES AND FEDERAL CIRCUIT LAW GOVERN
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`This district’s Patent Local Rules require parties to provide early identification of their
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`infringement and invalidity theories. See D. KAN. PAT. RULE 3.1 (setting out the requirements for
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`infringement contentions), 3.3 (same, for invalidity contentions). As pertinent here, a party
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`claiming patent infringement must serve a disclosure of asserted claims and infringement
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`2 The court aimed to avoid unnecessarily protracting resolution of this issue by, for example,
`avoiding the possibility of LoganTree including a request to amend its infringement contentions
`as a fallback position in response to Garmin’s anticipated motion to strike (similar to the fallback
`position LoganTree adopted in its prior motion to compel source code printouts that, if the court
`denied the motion, LoganTree wanted more time to narrow its request). In recent conferences with
`the court, Garmin has consistently maintained that it is eager to bring this case to a resolution by
`pressing forward with summary judgment as soon as possible. Given this, and LoganTree’s delays
`in the past few months, the court set a briefing schedule on the current motions that aimed to avoid
`extending the dispositive motion deadline because of this dispute. (ECF 153.)
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`13
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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 14 of 36
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`contentions that identify, for each asserted claim, “each accused apparatus, product, device,
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`process, method, act, or other instrumentality (‘Accused Instrumentality’) of each opposing party
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`of which the party is aware.” D. KAN. PAT. RULE 3.1(b). This rule further clarifies the level of
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`specificity required:
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`This identification must be as specific as possible. Each product,
`device, and apparatus must be identified by name or model number,
`if known. Each method or process must be identified by name, if
`known, or by any product, device, or apparatus which, when used,
`allegedly results in the practice of the claimed method or process.
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`Id. These disclosures must also include a “chart identifying specifically where each limitation of
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`each asserted claim is found within each Accused Instrumentality.” RULE 3.1(c). Once served,
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`the contentions constitute the universe of the parties’ respective theories, and they may be amended
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`as a matter of right only under certain circumstances or by court order upon a showing of good
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`cause. Id. RULE 3.5.
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`These rules are similar to those adopted by many other district courts. Issues concerning
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`the validity and interpretation of such local patent rules are “unique to patent cases and have a
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`close relationship to enforcement of substantive patent law,” so they are governed by the law of
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`the Federal Circuit rather than the regional circuit. O2 Micro Int’l Ltd. v. Monolithic Power Sys.,
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`Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006) (affirming district court order denying patentee’s
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`motion to amend infringement contentions under the Northern District of California’s local patent
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`rules); see, e.g., Neonatal Product Group, Inc. v. Shields, 276 F. Supp. 3d 1120, 1125-28 & n.2
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`(D. Kan. 2017) (applying Federal Circuit law and striking new infringement theory asserted on
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`summary judgment that was not disclosed in infringement contentions); Digital Ally, Inc. v. Taser
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`Int’l, Inc., No. 16-cv-2032-CM-TJJ, 2018 WL 1138283, at *3-*7 (D. Kan. Mar. 2, 2018) (same,
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`in denying leave to amend invalidity contentions to assert an additional prior art reference); see
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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 15 of 36
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`also Vivint, Inc. v. Alarm.com Inc., No. 2:15-cv-392, 2020 WL 3871346, at *5-* (D. Utah. July 9,
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`2020) (holding magistrate judge erred by applying Tenth Circuit law, rather than Federal Circuit
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`law, in compelling production of source code for instrumentality that was not identified in
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`infringement contentions). A district court has wide discretion in enforcing local patent rules. O2
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`Micro Int’l Ltd., 467 F.3d at 1366-67 (“Decisions enforcing local rules in patent cases will be
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`affirmed unless clearly unreasonable, arbitrary, or fanciful; based on erroneous conclusions of law;
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`clearly erroneous; or unsupported by any evidence.”).
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`III. LOGANTREE’S INFRINGEMENT CONTENTIONS DID NOT PROPERLY
`DISCLOSE MYERS’ NEW INFRINGEMENT THEORIES
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`
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`The court turns first to the threshold issue of whether Myers’ expert report discloses new
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`infringement theories, as Garmin contends, or whether it cites to supporting evidence to bolster
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`existing infringement theories, as LoganTree argues. LoganTree relies on Finjan, Inc. v. Symantec
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`Corp. for the principle that “[t]he dispositive inquiry in a motion to strike is . . . whether the
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`allegedly undisclosed ‘theory’ is in fact a new theory or new element of the accused product
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`alleged to practice a particular claim that was not previously identified in the plaintiff’s
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`contentions, or whether the ‘theory’ is instead the identification of additional evidentiary proof
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`showing that the accused element did in fact practice the limitation.” No. 14-cv-02998-HSG(JSC),
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`2018 WL 620169, at *2 (N.D. Cal. Jan. 30, 2018). LoganTree contends that Myers’ report did not
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`add previously unaccused functionalities, but instead “used Garmin Connect and daily step goal
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`streak as additional evidentiary proof of the Accused Products’ infringement.” In support,
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`LoganTree further cites Apple Inc. v. Samsung Electronics Co. to point out that the inquiry is
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`whether an expert has “permissibly specified the application of a disclosed theory” or has
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`“impermissibly substituted a new theory altogether.” No. 5:12-CV-0630-LHK-PSG, 2014 WL
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`12917334, at *1 (N.D. Cal. Jan. 9, 2014). LoganTree relies on legal principles that are correct in
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`Case 6:17-cv-01217-EFM Document 186 Filed 12/20/21 Page 16 of 36
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`the abstract, but its arguments as to how those legal principles apply to the facts of this case are
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`thin on substance.
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`The issue of whether these theories were properly encompassed within the scope of
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`LoganTree’s infringement contentions is properly framed by beginning with the purpose of the
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`disclosures required in D. KAN. PAT. RULE 3.1—specifically, the level of detail and specificity
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`required in subsections (b) and (c). Infringement and invalidity contentions are “designed
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`specifically to require parties to crystallize their theories of the case early in litigation so as to
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`prevent the ‘shifting sands’ approach to claim construction” and to “adhere to those theories once
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`they have been disclosed.” O2 Micro Int’l Ltd., 467 F.3d at 1366 n.12 (quotations omitted); see
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`also, e.g., Celgene Corp. v. Hetero Labs Ltd., No. 17-3387, 2021 WL 3701700, at *2 (D.N.J. June
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`15, 2021) (making the same observation about the District of New Jersey’s local patent rules);
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`INAG, Inc. v. Richar, LLC, No. 16-cv-00722-RFB-EJY, 2021 WL 1582766, at *3 (D. Nev. Apr.
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`22, 2021) (same, about the District of Nevada’s local patent rules and “similar patent rules
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`throughout the country”). These contentions “further the goal of full, timely discovery and provide
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`all parties with adequate notice of and infor