Case 6:17-cv-01217-EFM Document 227 Filed 09/14/22 Page 1 of 17
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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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` vs.
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`GARMIN INTERNATIONAL, INC.,
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`Plaintiff,
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`Defendant.
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` Case No. 17-1217-EFM
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`MEMORANDUM AND ORDER
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`This patent infringement suit involves Defendant Garmin International, Inc.’s activity
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`
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`trackers—a popular fitness accessory more commonly known as a smartwatch. Plaintiff
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`LoganTree LP is the owner of U.S. Patent No. 6,059,576 (the “ ’576 Patent”), which covers, in
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`part, a device to monitor and train individuals during physical activity. LoganTree asserts that 41
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`models of Garmin’s activity trackers infringe claims 1, 4, and 36 of the ‘576 Patent. Garmin denies
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`that its activity trackers infringe the ‘576 Patent and asserts that the ‘576 Patent is invalid for
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`indefiniteness.
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`This matter comes before the Court on Garmin’s Motion for Summary Judgment (Doc.
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`190). Garmin seeks summary judgment on LoganTree’s patent infringement claim and Garmin’s
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`affirmative defense that the ‘576 Patent is indefinite. Because the Court finds triable issues of fact
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`preclude summary judgment, the Court denies Garmin’s motion.
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`Case 6:17-cv-01217-EFM Document 227 Filed 09/14/22 Page 2 of 17
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`I.
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`Factual and Procedural Background1
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`A.
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`The ‘576 Patent
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`The application for the ‘576 Patent was filed on November 21, 1997, and the patent issued
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`May 9, 2000. In April 2014, LoganTree filed a request for reexamination of the ‘576 Patent with
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`the U.S. Patent and Trademark Office (the “Patent Office”), and the Patent Office issued a
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`reexamination certificate on March 17, 2015. The ‘576 Patent expired November 21, 2017.
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`LoganTree asserts that Garmin is liable for infringement of claims 1, 4, and 36 of the ‘576
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`Patent (the “Asserted Claims”).
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`Claim 1 reads (key limitations noted in bold):
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`1. A portable, self-contained device for monitoring movement of body parts during
`physical activity, said device comprising:
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` a
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` movement sensor capable of measuring data associated with unrestrained
`movement in any direction and generating signals indicative of said
`movement;
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` a
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` a
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` power source;
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` microprocessor connected to said movement sensor and to said power source, said
`microprocessor capable of receiving, interpreting, 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;
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`at least one user input connected to said microprocessor for controlling the
`operation of said device;
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` a
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` real-time clock connected to said microprocessor;
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`1 The facts are stipulated facts taken from the Pretrial Order (Doc. 187), uncontroverted, or where
`controverted, stated in the light most favorable to LoganTree, the party opposing summary judgment.
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`memory for storing said movement data; and
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`an output indicator connected to said microprocessor for signaling the occurrence
`of user-defined events;
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`wherein said movement sensor measures the angle and velocity of said movement.
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`Claim 4 depends from claim 1 and adds the following limitation: “wherein said movement
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`sensor comprises at least one accelerometer.”
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`Claim 36 depends from claim 1 and adds the following limitation: “wherein said output
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`indicator is configured to display information signaling the occurrence of the first user-defined
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`event based on the detection of the first user-defined event.”
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`B.
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` Infringement Allegations
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`LoganTree accuses 41 Garmin activity trackers (the “Accused Products”) of literally and
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`directly infringing the ’576 Patent from March 17, 2015, through November 21, 2017. These 41
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`products are split among 5 model families: the Vivofit Model family, the Fenix model family, the
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`Forerunner model family, the Quatix model family, and the Approach model family. For each
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`Accused Product, LoganTree accuses Garmin’s user-defined step-goal functionality of infringing
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`the Asserted Claims.2
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`The system’s real-time clock within Garmin’s Accused Products measures and records
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`information on a “per second” basis. The recorded time is tied to what Garmin calls a “minute
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`boundary.” A “minute boundary” is described by Garmin as the transition from one minute to
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`another. For example, if a change of activity occurs at 12:29:21 PM, the next minute boundary
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`would be 12:30:00 PM, while the preceding minute boundary would be 12:29:00 PM. Thus, when
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`2 During oral argument, the parties agreed that the operation of the step goal and step counting features are
`the same throughout all of the Accused Products.
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`a change of activity occurs between minute boundaries, such as 12:29:21, the stored time stamp
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`stored shows either 12:29:00 PM or 12:30:00. Garmin’s choice to use the minute boundary is a
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`choice of precision of the system, presumably because the user does not need to know the exact
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`second of the day the user met his or her daily step goal.
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`LoganTree’s infringement expert, Monty Myers, oversaw extensive testing on the Accused
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`Products. The testing process began with entering 750 steps as the daily step goal (“user defined
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`operational parameter”) for the Accused Products. Myers, or another tester, then walked at a
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`constant pace and noted the time when the Accused Products indicated the 750 step goal was
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`reached (“user-defined event”). Myers observed that the Accused Products produce and store an
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`“.FIT file,” which contains accumulated data such as step data and time stamps. Myers’ testing
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`showed the following results:
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` Forerunner 235 .FIT file- time stamp where the user achieved 208 steps;
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` Forerunner 25 .FIT file- time stamp where the user achieved 238 steps;
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` Vivofit 3 .FIT file- time stamp where the user achieved 290 steps;
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` Fenix 5 .FIT file- time stamp where the user achieved 687 steps; and
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` Vivosport .FIT file- time stamp where the user achieved 704 steps.
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`C.
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`Procedural History
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`This case has a long procedural history. After LoganTree filed its Complaint in 2017,
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`Garmin moved to stay the case pending Inter Partes Review (“IPR”) of the ‘576 Patent in the U.S.
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`Patent Office. The Court granted Garmin’s motion, and the case was stayed for over a year. After
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`the Patent Office issued its decision on the IPR, the Court lifted the stay. The parties then
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`conducted extensive discovery.
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`In January 2021, the Court issued its Markman Order construing certain terms of the ‘576
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`Patent. Specifically, the Court construed the portion of the “storing” limitation found in claim 1.
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`That limitation requires a microprocessor to store “first time stamp information reflecting a time
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`at which the movement data causing the first user-defined event occurred.” The Court construed
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`the term to mean “first time stamp information reflecting the time recorded or noted by the system
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`at which the movement data causing the first user-defined event occurred.” The Court further
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`explained that “the time stamp information is a recording of the time obtained from the system’s
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`real time clock,” and “is going to be measured based on the unit of measurement that the real-time
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`clock is programmed to obtain, whether that be nanoseconds, seconds, minutes, or some other unit
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`of measurement.” The Court also declined Garmin’s request to determine whether the term
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`“unrestrained movement in any direction,” also found in claim 1, was rendered indefinite based on
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`LoganTree’s positions during prosecution, reexamination, IPR, and this litigation.
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`Garmin now moves for summary judgment on LoganTree’s infringement claim as well as
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`its affirmative defense that the ‘576 Patent is invalid for indefiniteness. The Court heard oral
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`argument on Garmin’s motion on September 1, 2022.
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`II.
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`Legal Standard
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`Summary judgment is appropriate if the moving party demonstrates that there is no genuine
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`issue as to any material fact, and the movant is entitled to judgment as a matter of law.3 In applying
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`this standard, the Court views the evidence and reasonable inferences in the light most favorable
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`to the nonmoving party.4 A fact is “material” when it is essential to the claim, and issues of fact
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`3 Fed. R. Civ. P. 56(a).
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`4 City of Harrington v. Bell, 590 F.3d 1176, 1181 (10th Cir. 2010) (citation omitted).
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`are “genuine” if the proffered evidence permits a reasonable jury to decide the issue in either
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`party’s favor.5
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`The movant must initially show the absence of a genuine issue of material fact and
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`entitlement to judgment as a matter of law.6 A movant that does not bear the burden of persuasion
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`at trial need only show the lack of evidence on an essential element of the claim.7 If the movant
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`carries its initial burden, the nonmovant may not simply rest on its pleading but must instead “set
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`forth specific facts” that would be admissible in evidence in the event of trial from which a rational
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`trier of fact could find for the nonmovant.8 These facts must be clearly identified through affidavits,
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`deposition transcripts, or incorporated exhibits—conclusory allegations alone cannot survive a
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`motion for summary judgment.9
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`When a defendant moves for summary judgment on its affirmative defense, “[t]he
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`defendant . . . must demonstrate that no disputed material fact exists regarding the affirmative
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`defense asserted.”10 Once the defendant has met this burden, “the plaintiff must then demonstrate
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`with specificity the existence of a disputed material fact.”11 If the plaintiff cannot meet this burden,
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`5 Haynes v. Level 3 Commc’ns, LLC, 456 F.3d 1215, 1219 (10th Cir. 2006).
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`6 Spaulding v. United Transp. Union, 279 F.3d 901, 904 (10th Cir.2002) (citing Celotex Corp. v. Catrett, 477
`U.S. 317, 322–23 (1986)).
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`7 Thom v. Bristol-Myers Squibb Co., 353 F.3d 848, 851 (10th Cir. 2003) (citing Celotex, 477 U.S. at 322-23,
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`325).
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`8 Id. (citing Fed. R. Civ. P. 56(e)).
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`9 Mitchell v. City of Moore, 218 F.3d 1190, 1197 (10th Cir. 2000) (citing Adler v. Wal-Mart Stores, Inc., 144
`F.3d 664, 671 (10th Cir. 1998)).
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`10 Hutchinson v. Pfeil, 105 F.3d 562, 564 (10th Cir. 1997) (citations omitted).
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`11 Id.
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`“the affirmative defense bars [the] claim, and the defendant is then entitled to summary judgment
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`as a matter of law.”12
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`A.
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` Infringement
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`III. Analysis
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`
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`Garmin seeks a ruling that the Accused Products do not infringe the ‘576 Patent as a matter
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`of law. The Court determines whether an accused product infringes a patent’s claims using a two-
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`step inquiry.13 First, the Court must construe, as a matter of law, the claims to determine their
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`scope and meaning.14 In this case, the Court construed the disputed claim terms in its Markman
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`Order. Thus, the Court may proceed to the second step of the infringement analysis.
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`In step two, the Court compares the construed claims to the accused product.15 This step
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`is the infringement determination and is a question of fact.16 “To prove infringement, the patentee
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`must show that the accused device meets each claim limitation, either literally or under the doctrine
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`of equivalents.”17 LoganTree asserts that the Accused Products literally infringe the ‘576 Patent.
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`“Literal infringement requires that each and every claim limitation be present in the accused
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`product.”18 Thus, at the summary judgment stage, a court may properly enter judgment “when no
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`genuine issue of material fact exists, in particular, when no reasonably jury could find that every
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`12 Id. (citation omitted).
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`13 Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1370 (Fed. Cir. 2007) (citation omitted).
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`14 Id.; Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996).
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`15 Elbex Video, Ltd., 508 F.3d at 1370 (citation omitted).
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`16 Bai v. L&L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998) (citation omitted).
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`17 Playtex Prods., Inc. v. Proctor & Gamble Co., 400 F.3d 901, 906 (Fed. Cir. 2005) (citation omitted).
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`18 Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc., 467 F.3d 1370, 1378 (Fed. Cir. 2006) (citation
`omitted).
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`limitation recited in the properly construed claim is or is not found in the accused device.”19
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`Applying this standard, the Court must determine whether each of the required limitations are
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`found within the Accused Products. If not, LoganTree’s infringement claim fails as a matter of
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`law.
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`The principal infringement issue is whether the Accused Products store “first time stamp
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`information reflecting a time at which the movement data causing the first user-defined event
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`occurred” as required by independent claim 1, from which claims 4 and 36 depend. This claim
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`limitation was highly contested during claim construction. The Court construed it as “first time
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`stamp information reflecting the time recorded or noted by the system at which the movement data
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`causing the first user-defined event occurred.” The Court further explained that “the time stamp
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`information is a recording of the time obtained from the system’s real time clock,” and “is going
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`to be measured based on the unit of measurement that the real-time clock is programmed to obtain,
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`whether that be nanoseconds, seconds, minutes, or some other unit of measurement.”
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` Garmin asserts two arguments as to why the Accused Products do not meet this claim
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`limitation. First, Garmin argues that the Accused Products do not store a time stamp when the
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`user achieves a user-defined step goal. Second, Garmin argues that even if the Accused Products
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`do store a time stamp when the user achieves a user-defined step goal, the Accused Products do
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`not record that time stamp on a second basis—the basis of measurement used by the Accused
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`Products’ real time clock—as required by the Court’s Markman Order.
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`Storing “first time stamp information reflecting the time recorded or noted by the
`1.
`system at which the movement data causing the first user-defined event occurred”
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`19 Wi-LAN USA, Inc. v. Ericsson, Inc., 675 F App’x 984, 992 (Fed. Cir. 2017) (quoting Bai, 160 F.3d at
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`1353).
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`Garmin asserts that the Accused Products do not store a time stamp when the user achieves
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`a user-defined step goal. Rather, Garmin contends that the Accused Products store time stamps
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`on regular pre-determined intervals (e.g., every 15 minutes) or at the minute boundary of when a
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`user changes activity (e.g., when a user slows down, stops, speeds up, has a change in heart rate,
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`etc.). Garmin further argues that LoganTree has not offered any evidence that the Accused
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`Products meet this claim limitation because Myers’ test results show that the Accused Products
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`“record[] time stamps before the user-defined step goal is met when the claim requires a time
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`stamp reflecting the time at which a user achieved his or her user-defined step goal.” For example,
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`Garmin notes that Myers’ test results show a time stamp recording 208 steps for the Forerunner
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`235 or a time stamp recording 687 steps for the Fenix 5 when the step goal for both products was
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`750 steps.
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`In response, LoganTree argues that Garmin’s argument misstates the Court’s claim
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`construction. LoganTree argues that the claim limitation does not require the product to store time
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`stamp information when the first user defined event occurred. According to LoganTree, Garmin’s
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`interpretation impermissibly removes the following crossed-out language from the claim: “first
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`time stamp information reflecting the time recorded or noted by the system at which the movement
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`data causing the first user-defined event occurred.” LoganTree also argues that Myers’ deposition
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`testimony and expert report create a genuine issue of material fact regarding whether the Accused
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`Products practice the claim limitation.
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`The Court agrees with LoganTree. “The Supreme Court has stated that ‘[e]ach element
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`contained in a patent claim is deemed material to defining the scope of the patented invention. . . .’
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`It is generally improper to construe a patent claim so that express claim limitations or elements are
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`rendered superfluous.”20 Garmin’s argument impermissibly eliminates the phrases “recorded or
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`noted by the system” and “the movement data causing” from the Court’s claim construction. Thus,
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`the Court cannot accept Garmin’s argument that the claim only requires “a time stamp reflecting
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`the time at which a user achieved his or her user-defined step goal.”
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`Furthermore, Myers’ testimony and expert report are sufficient to overcome Garmin’s
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`motion for summary judgment. Myers opined that his testing data showed time stamp entries in
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`.FIT files associated with step data other than at every 15-minute interval or a change in activity
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`level. Myers concluded that these time stamps correspond with the time that the step goal would
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`have been met, even though an exact 750 step count did not appear in the .FIT file.
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`Myers also opined as to why the time stamps did not show exactly 750 steps. It is
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`undisputed that the Accused Products store time stamps at the minute boundary. Myers testified
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`that when the user reaches a step goal, the Accused Products store a time stamp at the minute
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`boundary and record the number of steps that correspond with that minute boundary, not the
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`number of steps that caused the time stamp to be recorded. LoganTree contends that this time
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`stamp information reflects “the movement data causing the first user-defined event” because
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`Garmin’s expert testified that the steps in the step count are what cause the step goal to occur.
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`At oral argument, Garmin disputed Myers’ opinions and argued that its infringement
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`expert, Robert Blair, proved that the time stamps Myers was relying upon were not created in
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`response to a user reaching a user-defined step count. This argument, however, presents the
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`20 Promos Techs., Inc. v. Samsung Elecs. Co., Ltd., 809 F. App’x 825, 834 (Fed. Cir. 2020) (quoting Warner
`-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997)).
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`“classic battle of the experts” at the summary judgment stage.21 It is not the Court, but the jury’s,
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`duty to determine the weight and credibility each expert receives.22
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`Accordingly, the Court concludes that there is a genuine issue of material fact as to whether
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`the Accused Products store “first time stamp information reflecting the time recorded or noted by
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`the system at which the movement data causing the first user-defined event occurred.” Therefore,
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`the Court denies summary judgment on this basis.
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`2.
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`Measurement of time stamp information
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`Garmin next argues that summary judgment is warranted based on the Court’s construction
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`of the term “time stamp” in the Markman Order. In that Order, the Court stated that the claimed
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`time stamp “is a recording of the time obtained from the system’s real time clock.” The specificity
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`of “the time stamp information is going to be measured based on the unit of measurement that the
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`real-time clock is programmed to obtain, whether that be nanoseconds, seconds, minutes, or some
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`other unit of measurement.”
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`
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`It is undisputed that the real time clock in the Accused Products measures information on
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`a per-second basis. Garmin thus argues that, under the Court’s claim construction, any time stamps
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`relating to the user-defined step goal must record the time, accurate to the second, at which the
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`user-defined step goal was achieved. Garmin argues that the Accused Products are intentionally
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`designed to wait (anywhere from 1 minute to 15 minutes) to write a time stamp associated with
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`step data in the .FIT file. Because these time stamps are recorded on a minute basis, and not a
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`second basis, Garmin contends that they do not match the “time” of the system.
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`21 Lapham v. Watts Regulator Co., 2016 WL 248471, at *6 (D. Kan. 2016) (citations omitted).
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`22 Id.
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`In response, LoganTree argues that the evidence shows that the Accused Products store
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`time stamps on a per-second basis. LoganTree points to the Garmin’s infringement expert’s
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`testimony, in which Blair stated that Garmin has “a 4-byte time stamp that counts the number of
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`seconds since . . . December 31, 1989.” LoganTree also points to Myers’ .FIT files which show
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`the time stamps recorded on a second basis (by counting the number of seconds since December
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`31, 1989). Given this evidence, a genuine issue of material fact exists as to whether the Accused
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`Products record time stamps on a minute or second basis.
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`Overall, the Court concludes that LoganTree has provided sufficient evidence that a
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`rational trier of fact could find that the Accused Products store “first time stamp information
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`reflecting a time recorded or noted by the system at which the movement data causing the user-
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`defined event occurred.” Therefore, Garmin’s motion for summary judgment is denied as to
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`LoganTree’s infringement claim.
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`B.
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`Invalidity of the ‘576 Patent
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`Garmin seeks summary judgment on its affirmative defense that the ‘576 Patent is invalid
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`because it is indefinite. A patent granted by the U.S. Patent and Trademark Office is presumed
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`valid.23 The burden of proving invalidity falls on the patent challenger, who must establish
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`invalidity with clear and convincing evidence.24
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`“The Patent Act requires that a patent specification ‘conclude with one or more claims
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`particularly pointing out and distinctly claiming the subject matter which the applicant regards as
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`23 35 U.S.C. § 282(a).
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`
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`24 Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 100-03 (2011); Cox Commc’ns v. Sprint Commc’n Co. LP,
`838 F.3d 1224, 1228 (Fed. Cir. 2016).
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`[the] invention.’ ”25 “[A] patent is invalid for indefiniteness if its claims, read in light of the
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`specification delineating the patent, and the prosecution history, fail to inform, with reasonable
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`certainty, those skilled in the art about the scope of the invention.26
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`In determining whether a patent is invalid for indefiniteness, courts look to the “patent
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`record—the claims, specification, and prosecution history—to ascertain if they convey to one of
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`skill in the art with reasonable certainty the scope of the invention claimed.”27 The prosecution
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`history is “the complete record of the proceedings before the PTO” and includes reexamination
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`proceedings.28 “Indefiniteness may result from inconsistent prosecution history statements where
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`the claim language and specification on their own leave an uncertainty that, if unresolved, would
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`produce indefiniteness.”29
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`To obtain its patent, LoganTree amended the claims by adding the following italicized
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`language: “a movement sensor capable of measuring data associated with unrestrained movement
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`in any direction and generating signals indicative of said movement.” Garmin argues that the ‘576
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`Patent is indefinite because LoganTree made conflicting statements during reexamination, the IPR,
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`and this litigation as to what constitutes “unrestrained movement in any direction.”
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`First, Garmin asserts that the LoganTree made inconsistent statements as to what
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`“movement in any direction” means. Garmin asserts that during reexamination LoganTree
`
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`25 Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014) (alteration in original) (quoting 35
`U.S.C. § 112 (2006)).
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`26 Id.
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`27 Infinity Comput. Prods., Inc. v. OKI Data Ams., Inc., 987 F.3d 1053, 1059 (Fed. Cir. 2021) (quoting Teva
`Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015)).
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`28 Id. (quoting InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1341 (Fed. Cir. 2014)).
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`29 Id.
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`distinguished the Vock/Flentov patents from the ‘576 Patent by arguing that Vock/Flentov, which
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`measures movement in six directions, did not teach unrestrained movement in any direction. Later,
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`during the IPR, LoganTree argued that Stewart, which measures movement in nine directions did
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`not teach unrestrained movement in any direction. But, in this litigation, LoganTree contends that
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`the Accused Products, which contain a movement sensor attached to a user’s wrist, do measure
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`unrestrained movement in any direction. Garmin argues that it is nonsensical for a device
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`measuring movement in less directions, i.e., the Accused Products, to infringe while devices that
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`measure movement in more directions do not infringe.
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`Next, Garmin argues that LoganTree has taken inconsistent positions as to what
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`“unrestrained movement” means. During reexamination, LoganTree argued that the ‘576 Patent
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`is different from the Vock/Flentov patent, which shows a movement sensor connected to a user’s
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`ski/snowboard, because Vock/Flentov does not measure unrestrained movement in any direction.
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`During the IPR, LoganTree argued that the ‘576 Patent is different from the Stewart patent, which
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`shows a movement sensor connected to a user’s head, because Stewart does not measure
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`unrestrained movement in any direction. In this litigation, however, LoganTree contends that the
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`Accused Products, which have a movement sensor connected to the user’s wrist, do measure
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`unrestrained movement in any direction. Garmin argues that LoganTree’s position in this litigation
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`is inconsistent with its prior positions on Vock/Flentov and Stewart.
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`The Court cannot conclude that Garmin has proven invalidity by clear and convincing
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`evidence. The Court rejects Garmin’s argument to the extent it relies on LoganTree’s infringement
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`contentions as a basis for indefiniteness. Indefiniteness results from inconsistent statements made
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`Case 6:17-cv-01217-EFM Document 227 Filed 09/14/22 Page 15 of 17
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`by the patentee to the Patent Office, not on inconsistent statements made by the patentee during
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`prosecution and then in litigation.30
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`Furthermore, Garmin’s reliance on Infinity Computer Products, Inc. v. Oki Data Americas,
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`Inc.,31 is misplaced. In that case, the Federal Circuit held that the patent was indefinite when the
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`patentee defined a claim term in two, contradictory ways before the Patent Office.32 First, during
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`original prosecution, the patentee argued that the term “passive link” did not allow for intervening
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`circuitry.33 During reexamination, however, the patentee argued that the “passive link” does
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`include intervening circuitry.34 The district court found that the term “passive ink” was indefinite
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`based on the defendant’s clear and convincing evidence.35 The Federal Circuit affirmed, finding
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`that “the intrinsic evidence leaves an ordinary skilled artisan without reasonable certainty as to
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`where the passive link ends and where the computer begins.”36
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`30 See id. at 1060. Garmin has not invoked the doctrine of prosecution history disclaimer, which applies to
`inconsistent statements made by the patentee during prosecution and litigation. The doctrine of prosecution history
`disclaimer “preclude[es] patentees form recapturing through interpretation specific meanings disclaimed during
`prosecutions.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir. 2017) (quotation marks and citation
`omitted). The Supreme Court explained that “when a patentee, on the rejection of his application inserts in his
`specification, in consequence, limitations and restrictions for the purpose of obtaining his patent, he cannot after he
`has obtained it, claim that it shall be construed as it would have been construed if such limitations and restrictions
`were not contained in it.” Id. (quoting Roemer v. Peddie, 132 U.S. 313, 317 (1889)). The doctrine “ensures that
`claims are not ‘construed one way in order to obtain their allowance and in a different way against accused
`infringers.’ ” Id. (citation omitted).
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`31 987 F.3d 1053 (Fed. Cir. 2021).
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`32 Id. at 1060.
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`33 Id. at 1056-57.
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`34 Id. at 1058.
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`35 Id. at 1058-59.
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`36 Id. at 1060.
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`Infinity Products is distinguishable from this case. Unlike the patentee in Infinity Products,
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`LoganTree did not provide conflicting definitions to the Patent Office during reexamination and
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`IPR. Instead, LoganTree distinguished the prior art in different ways. During reexamination,
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`LoganTree argues that “unrestrained movement in any direction” does not include movement in
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`limited directions—for example, the axial or vertical movement described in Vock/Flentov.
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`During IPR, LoganTree argued that “unrestrained movement in any direction” does not include
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`“restrained” movement inside a football helmet. Thus, the Court cannot find the ‘576 Patent
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`invalid based on the Federal Circuit’s ruling in Infinity Products.
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`Finally, LoganTree has come forward with expert testimony stating that a person of
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`ordinary skill in the art would understand the scope of the claims in view of the prosecution history.
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`LoganTree’s invalidity expert, Frank Ferrese, opined in his deposition that, as one of ordinary skill
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`in the art, he could understand the meaning of the claimed phrase “unrestrained movement in any
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`direction.” Garmin argues that Ferrese’s opinion is based on the incorrect presumption that
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`Vock/Flentov only measures loft (time) and speed. Garmin further argues that during Ferrese’s
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`deposition, Ferrese agreed with Garmin’s attorney that Vock/Flentov discloses more than loft and
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`speed, and instead measures “speed, direction, and vehicle height.” According to Garmin, this
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`agreement by Ferrese results in a withdrawal of Ferrese’s infringement opinion leaving LoganTree
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`with no expert opinion to rely upon for invalidity.
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`Garmin’s argument, however, overstates the deposition testimony. Ferrese’s agreement
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`with Garmin’s counsel was part of a larger back and forth confrontation regarding what
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`Vock/Flentov discloses. Garmin’s counsel had approached the question in a different manner in
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`two previous ways before Ferrese agreed with her. Furthermore, even if Ferrese’s testimony was
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`inconsistent with his opinion, this testimony goes to his credibility and can be addressed at trial.
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`Garmin has not moved to exclude Ferrese’s opinion under Fed. R. Evid. 702. Therefore, the Court
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`will not exclude his testimony on summary judgment.
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`Overall, the Court concludes that Garmin has failed to meet its burden to show that the
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`‘576 Patent is invalid for indefiniteness. Garmin’s motion for summary judgment on its
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`affirmative defense is denied.
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`IT IS THEREFORE ORDERED that that Garmin’s Motion for Summary Judgment
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`(Doc. 190) is DENIED.
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`IT IS FURTHER ORDERED that Garmin’s Motion for Oral Argument (Doc. 199) is
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`GRANTED. The Court held oral argument on Garmin’s motion on September 1, 2022.
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`IT IS SO ORDERED.
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`Dated this 14th day of September, 2022.
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`ERIC F. MELGREN
`CHIEF UNITED STATES DISTRICT JUDGE
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