Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
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`Defendant.
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`MEMORANDUM IN SUPPORT
`OF PLAINTIFF LOGANTREE LP’S MOTION IN LIMINE
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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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`CIVIL ACTION NO. 6:17-CV-01217
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`Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 2 of 11
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`I. Introduction
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`Plaintiff LoganTree LP (“LoganTree”) files this memorandum in support of its motion for
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`an order in limine excluding evidence of and references to the following allegations and matters:
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`Argument, evidence, testimony, or suggestion that there is any difference in the
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`operation of the step goal and step counting features between any of the Accused Products.
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`Argument, evidence, testimony, or suggestion that Garmin’s products do not
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`infringe because they do not record “a time stamp reflecting the time at which a user achieved
`his or her user-defined step goal.”
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`Argument, evidence, or testimony of any comparison between the accused products
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`to prior art.
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`Argument, evidence, testimony, or suggestion that the asserted claims of the ’576
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`patent are limited to workers compensation claims, back angles on lifting heavy objects, or the
`BackTalk device, or that Garmin does not infringe because Garmin’s Accused Products are
`different from the BackTalk device.
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`Argument, evidence, testimony, or suggestion that LoganTree took contradictory
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`positions between its statements to the patent office and its infringement contentions in this
`litigation.
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`Argument, evidence, testimony, or reference to any alleged improprieties in
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`LoganTree’s, or any of its affiliates’, dealings with the IRS or SEC.
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`For the reasons stated herein, LoganTree respectfully request that the Court grant these motions in
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`limine during the trial in this case.
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`II. Argument and Authorities
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`Motions in limine allow the Parties to make efficient use of the Court’s time, minimize trial
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`interruptions, avoid wasting the jury’s time, and assist trial counsel to prepare witnesses. See Hibu,
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`Inc. v. Peck, No. 16-1055-JTM, 2018 WL 372437, at *1 (D. Kan. Jan. 11, 2018) (“The purpose of
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`an in limine motion is to aid the trial process by enabling the Court to rule in advance of trial on
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`the relevance of certain forecasted evidence, as to issues that are definitely set for trial, without
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`lengthy argument at, or interruption of, the trial.” (citation omitted)).
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`Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 3 of 11
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`MIL No. 1: The Court should exclude any argument or evidence suggesting there is
`difference in the operation of the step-goal or step-counting features amongst the Accused
`Products because Garmin repeatedly represented no such difference exists.
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`Parties should be held to factual statements they make in Court, particularly when seeking
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`to use those factual statements to their advantage.
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`During the hearing on Garmin’s Motion for Summary Judgment, Garmin’s counsel
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`unequivocally represented to the Court that there was no difference between how the step-goal and
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`step-counting functionality operated between the Garmin Accused Products at issue.
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`… We’re seeking summary judgment on all of them because
`in all of the products, as they add different features and different
`functionalities that might charge, you know, more money for
`different features, there’s one operation that’s consistent between
`them, and that is the step goal and the step counting. So that
`functionality is the same between the products.
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`They split up into different buckets. The five buckets is how
`the plaintiff analyzed them in their expert -- or in their expert report
`on infringement, but there’s no dispute between the parties that
`the operation of the products as it relates to step counting, step
`goal, et cetera, is the same between all of them.
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`See Ex. 1, Excerpt from Summary Judgment Hearing Transcript, at 6:6–19 (emphasis added).
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`Presumably, Garmin was not misleading the Court. And, in reliance on Garmin’s factual
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`representation, the Court made that finding a basis of its summary judgment ruling. See Doc. 227,
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`Memorandum and Order, at 3, n.2 (“During oral argument, the parties agreed that the operation of
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`the step goal and step counting features are the same throughout all of the Accused Products.”)
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`“Formal admissions” made in court, such as the admissions above, constitute judicial
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`admissions that “have the effect of withdrawing a fact from issue and dispensing wholly with the
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`need for proof of the fact.” See, e.g., Grynberg v. Bar S Servs., Inc., 527 F. App’x 736, 739 (10th
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`Cir. 2013); see also Wells Fargo Bank, N.A. v. Mesh Suture, Inc., 31 F.4th 1300, 1313 (10th Cir.
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`Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 4 of 11
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`2022) (judicial admissions “include intentional and unambiguous waivers that release the opposing
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`party from its burden to prove the facts necessary to establish the waived conclusion of law”).
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`As such, there is no need to litigate the fact issue of whether there is a difference between
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`the step-goal and step-counting functionalities of the Accused Products. Doing so would be a waste
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`of the juror’s valuable time when Garmin has already represented to this Court that the Accused
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`Products operate no differently in that respect. Further, Garmin can point to no “exceptional
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`circumstance that would warrant relief from [its] judicial admission.” Id. at 1314. Like the
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`defendant in Wells Fargo, Garmin “relied” on its admission “to argue” that it was entitled to
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`summary judgment on all products—its “admission was not the result of [its] being defrauded or
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`reasonably mistaken.” Id. Accordingly, the Court should hold Garmin to its representations, and
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`forbid Garmin from introducing evidence or argument about alleged differences in the operation
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`of the step-goal or step-counting features of the Accused Products, after Garmin expressly
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`disclaimed the existence of such differences in an effort to dispose of the case.
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`MIL No. 2: The Court should exclude any argument or evidence suggesting that the
`asserted claims require recording “a time stamp reflecting the time at which a user achieved
`his or her user-defined step goal” because, as the Court already held, that argument
`impermissibly removes words from the Court’s claim construction.
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`Whether the Asserted Claims require recording of a timestamp “at the time at which a user
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`achieved his or her user-defined step goal” is a question of claim scope. Questions of claim scope
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`–– i.e., what a claim does or does not cover –– are questions of law. See Markman v. Westview
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`Instruments, Inc., 517 U.S. 370, 384-385 (1996). And the Court has already decided this question
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`of law, holding that Garmin’s argument about the scope of the Asserted Claim is incorrect. See
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`Doc. 227 at 10 (“Garmin’s argument impermissibly eliminates the phrases ‘recorded or noted by
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`the system’ and ‘the movement data causing’ from the Court’s claim construction. Thus, the Court
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`cannot accept Garmin’s argument that the claim only requires ‘a time stamp reflecting the time at
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`Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 5 of 11
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`which a user achieved his or her user-defined step goal.’”); see id. at 9-10 (citing Promos Techs.,
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`Inc. v. Samsung Elecs. Co., Ltd., 809 F. App’x 825, 834 (Fed. Cir. 2020); Warner- Jenkinson Co.,
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`Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997)).
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`Garmin opposes this proposed limine because it wants to present a non-infringement
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`argument to the jury that “impermissibly eliminates . . . phrases . . . from the Court’s claim
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`construction.” But, as the Court recognized in denying Garmin’s motion for summary judgment,
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`Garmin cannot make arguments that contradict the Court’s claim construction. That is true whether
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`the argument is to the Court or to be made in front of a jury.
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`The language of the Asserted Claims, as construed by the Court, and, as re-affirmed by the
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`Court’s summary judgment ruling, does not require a time stamp at the exact time when a user met
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`his or her defined step goal. Instead, LoganTree only needs to show that the Accused Products
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`store a timestamp “reflecting the time recorded or noted by the system at which the movement data
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`causing” the step goal occurred. See Doc. 227 at 11 (emphasis added); cf. Doc. 106 at 9.
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`MIL No. 3: The Court should exclude any argument or evidence comparing the Accused
`Products and prior art.
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`The Court should exclude any references, evidence, testimony, arguments comparing the
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`accused devices to prior art. It would be improper for Garmin to argue that the accused product
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`does not infringe merely because they practice the prior art as there is no “practicing the prior art”
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`defense under the Federal Circuit law. Zenith Elecs. Corp. v. PDI Comm. Sys., 522 F.3d 1348,
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`1363 (Fed. Cir. 2008) (citing Tate Access Floors, Inc. v. Interface Architectural Resources, Inc.,
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`279 F.3d 1357, 1367 (Fed. Cir. 2002), and stating that it had previously held that “defense of
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`noninfringement cannot be proved by comparing an accused product to the prior art”). Further, to
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`establish infringement there is no requirement that Garmin’s “accused devices must not be an
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`adoption of the combined teachings of the prior art.” Baxter Healthcare Corp. v. Spectramed, Inc.,
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`Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 6 of 11
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`49 F.3d 1575, 1583 (Fed. Cir. 1995) (to establish patent infringement there is “no requirement that
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`the accused device be nonobvious in light of the prior art, or otherwise be itself patentable.”).
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`MIL No. 4: The Court should exclude all argument or evidence suggesting that the
`asserted claims of the ’576 patent are limited to workers compensation claims, back angles
`on lifting heavy objects, or the BackTalk device, or that Garmin does not infringe because
`Garmin’s Accused Products are different from the BackTalk device.
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`“It is the claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of Am.,
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`775 F.2d 1107, 1121 (Fed. Cir. 1985) (citing Aro Mfg. Co., Inc. v. Convertible Top Replacement
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`Co., Inc., 365 U.S. 336, 339 (1961)). This is a bedrock principle of patent law. Accordingly, the
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`Court should exclude any argument, evidence, testimony, or suggestion that the asserted claims of
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`the ’576 Patent are limited to workers compensation claims or back angles on lifting heavy objects
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`because such argument originates from the specification, not the claims.
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`Garmin wants to introduce evidence of workers compensation claims, back angles on
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`lifting heavy objects, and other descriptions from the ’576 patent specification to confuse the jury
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`into believing the claims are limited by the specification. However, “[i]f everything in the
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`specification were required to be read into the claims, or if structural claims were to be limited to
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`devices operated precisely as a specification-described embodiment is operated, there would be no
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`need for claims.” Id. So, the Court should exclude Garmin from limiting the ’576 claims to
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`specification embodiments as the law “does not require that an applicant describe in his
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`specification every conceivable and possible future embodiment of his invention.” Id.
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`Further, the Court should exclude any argument, evidence, testimony, or suggestion that
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`the scope of Asserted Claims of the ’576 Patent is limited to the BackTalk device, or that Garmin
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`does not infringe because Garmin’s Accused Products are different from the BackTalk device.
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`“Infringement, literal or by equivalence, is determined by comparing an accused product not with
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`a preferred embodiment described in the specification, or with a commercialized embodiment of
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`Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 7 of 11
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`the patentee, but with the properly and previously construed claims in suit.” SRI Int’l, 775 F.2d at
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`1121. Apparently, Garmin wants to compare its infringing devices to the BackTalk device, “a
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`commercialized embodiment of the patentee.” This infringement analysis is improper under SRI
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`Int’l.
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`Comparison between the accused products and the commercialized embodiment of the
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`patent or the discussion of preferred embodiments described in the specification have no relevance
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`to any claim or defense in this case. FRE 402. Even if it were relevant, it would mislead the jury
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`into believing that the ’576 patent’s preferred and commercial embodiments represent the legal
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`claims of the ’576 patent—i.e., the jury will believe that infringement is determined by comparing
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`the accused products with the patent figures or with the commercial embodiments. As such, the
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`probative value of any such matter would be greatly outweighed by the danger of unfair prejudice,
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`confusion of the issues, and/or misleading the jury. FRE 403.
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`MIL No. 5: The Court should exclude arguments or evidence suggesting that LoganTree
`disclaimed claim scope by taking contradictory positions between its statements to the patent
`office and its infringement contentions in this lawsuit.
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`The legal doctrine of prosecution history disclaimer “ensures that claims are not ‘construed
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`one way in order to obtain their allowance and in a different way against accused infringers.’” See
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`Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir. 2017) (citing Southwall Techs.
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`Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995)). This doctrine applies to the patent
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`owner’s statements to the patent office either during patent prosecution, or during inter partes
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`review proceedings. See Asylus Networks, 856 F.3d at 1360 (“Extending the prosecution
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`disclaimer doctrine to IPR proceedings will ensure that claims are not argued one way in order to
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`maintain their patentability and in a different way against accused infringers.”)
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`Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 8 of 11
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`Whether prosecution history disclaimer has occurred, and the scope of such disclaimer, is
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`a claim construction question, which is an issue of law for the Court. See iLight Techs., Inc. v.
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`Fallon Luminous Prod. Corp., 375 F. App’x 21, 27 (Fed. Cir.), order clarified on reh’g, 380 F.
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`App’x 978 (Fed. Cir. 2010) (“Claim construction is a question of law that this court reviews de
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`novo . . . . Whether prosecution history disclaimer applies is a legal question this court also reviews
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`de novo.”).
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`Here, Garmin never made a prosecution history disclaimer argument in its claim
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`construction briefing to the Court. See generally Doc. 85. The Court noted such in its recent
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`summary judgment order. See Doc. 227 at 15, n.30 (“Garmin has not invoked the doctrine of
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`prosecution history disclaimer, which applies to inconsistent statements made by the patentee
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`during prosecution and litigation.”). Garmin should not be allowed to raise a claim construction
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`argument that it never made to the Court to the jury.
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`MIL No. 6: The Court should exclude arguments or evidence suggesting that there were
`improprieties in LoganTree’s or its affiliates’ dealings with the SEC or IRS.
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`It is frankly baffling that Garmin has chosen to oppose this motion in limine. LoganTree
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`can only assume that, by opposing, Garmin intends to make veiled suggestions to the jury that a
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`company named Bio Kinetics, an affiliate of LoganTree who commercialized a commercial
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`embodiment of the ’576 Patent, had experienced unspecified “SEC problems,” and perhaps also
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`issues with the IRS. Garmin has identified on its trial exhibit list Exhibit No. 625, which makes
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`vague references to such issues. See Ex. 2, Garmin’s Trial Exhibit No. 652; cf. Doc. 238 at 13.
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`First, this document refers to Bio Kinetics, which is not a party to this case. See Ex. 2 at 1.
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`There is nothing in this case to suggest that LoganTree, the patent owner and plaintiff, had any
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`issues with the SEC or IRS.
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`Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 9 of 11
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`Moreover, there is no evidence that substantiates the existence of any actual wrongdoing
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`that the SEC or IRS found with respect to Bio Kinetics either. Indeed, with respect to the SEC, Bio
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`Kinetics was not even a publicly traded company. See Ex. 3, J. Brann Depo. at 132:5-14.
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`Simply put, there is no reason for Garmin to mention these issues other than mudslinging
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`by unsubstantiated insinuations. Whether one of LoganTree’s affiliates may or may not, at one
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`time, have had issues with the IRS or SEC is not relevant to whether Garmin infringes the ’576
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`Patent, or the amount of damages that Garmin should pay if it were found to have infringed. See
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`Fed. R. Evid. 401, 402. This is the classic type of irrelevant yet inflammatory issues that could
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`prejudice the jury and distract from the issues that matter. And multiple Federal Rules of Evidence
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`were designed to prevent this type of litigation. See Fed. R. Evid. 403 (prohibits evidence, even if
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`relevant, that risks “unfair prejudice, confusing the issues, [or] misleading the jury . . .”); 404(b)
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`(prohibits “evidence of any other crime, wrong, or act to prove a person’s character . . .”).
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`III. Conclusion
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`For these reasons, as set forth above, LoganTree respectfully requests that the Court grant
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`the foregoing motions in limine.
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`Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 10 of 11
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`Respectfully submitted by:
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`FOULSTON SIEFKIN LLP
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`/s/Clayton J. Kaiser
`Clayton J. Kaiser, Kansas Bar #24066
`Foulston Siefkin LLP
`1551 N. Waterfront Pkwy, Suite 100
`Wichita, Kansas 67206
`O: 316-291-9539
`F: 866-280-2532
`ckaiser@foulston.com
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`and
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`MCCATHERN, PLLC
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`/s/ Arnold Shokouhi
`Arnold Shokouhi, TX (pro hac vice)
`James E. Sherry, TX (pro hac vice)
`3710 Rawlins Street, Suite 1600
`Dallas, Texas 75219
`O: 214-443-4478
`F: 214-741-4717
`arnolds@mccathernlaw.com
`jsherry@mccathernlaw.com
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`and
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`Ahmad, Zavitsanos & Mensing PC
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`/s/ Jason McManis
`Jason McManis, TX (pro hac vice)
`Weining Bai, TX (pro hac vice)
`Sujeeth Rajavolu (pro hac vice)
`1221 McKinney Street, Suite 2500
`Houston, Texas 77010
`T: 713-655-1101
`F: 713-655-0062
`jmcmanis@azalaw.com
`wbai@azalaw.com
`srajavolu@azalaw.com
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`Counsel for Plaintiff LoganTree LP
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`Case 6:17-cv-01217-EFM Document 247 Filed 10/10/22 Page 11 of 11
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 10, 2022, I electronically filed a copy of the foregoing
`document with the Clerk of the Court using the CM/ECF system, which will send notification of
`such filing to counsel of record for all parties in the case.
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`/s/Clayton J. Kaiser
`Clayton J. Kaiser, #24066
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