Case 6:17-cv-01217-EFM Document 261 Filed 10/13/22 Page 1 of 13
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` IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
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`Case No. 6:17-cv-01217
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`LOGANTREE LP,
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` Plaintiff,
`vs.
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`GARMIN INTERNATIONAL, INC.,
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`Defendant.
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`GARMIN’S OPPOSITION TO LOGANTREE’S OMNIBUS MOTION IN LIMINE
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`Garmin International, Inc. (“Garmin”) opposes LoganTree LP’s (“LoganTree”)
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`omnibus motion in limine (ECF Nos. 246–47), and respectfully requests the Court deny
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`the following motions in limine.
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`I.
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`INTRODUCTION
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`Each of LoganTree’s motions in limine shares a common trait—each purport to ask the
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`Court to prevent Garmin from offering argument, evidence, or testimony contrary to the law, but
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`then actually ask the Court to foreclose Garmin from presenting wholly permissible arguments,
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`evidence, and testimony that are standard fare in virtually every patent trial. For the reasons set
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`forth below, each of LoganTree’s motions should be denied.
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`II. MOTIONS IN LIMINE
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`A. Motion in Limine #1 – The Court should Reject LoganTree’s Attempt to Cure its
`Failures of Proof Through a Motion in Limine
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`LoganTree’s first motion in limine is not really an evidentiary motion. Instead, it seeks to
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`use a single comment from Garmin’s counsel at summary judgment in an attempt to reduce its
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`burden in proving infringement of each and every limitation of the asserted claims for each and
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`every one of the 41 Accused Products. At its core, LoganTree seeks a shortcut to its infringement
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`case and asks this Court to overlook LoganTree’s prior failure to prove that the five Accused
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`Products in its expert’s report are representative of all 41 of Garmin’s Accused Products. For the
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`reasons explained below, the Court should deny LoganTree’s belated attempt to do so.
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`As Garmin explained in support of its proposed version of the verdict form, it is
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`indisputable that LoganTree bears the burden of infringement for each and every of Garmin’s 41
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`Accused Products. See ECF No. 260-1, at 4. Yet both through its own proposed verdict form and
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`this motion in limine, LoganTree now asks the Court to reduce its burden considerably by excusing
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`it from coming forward with evidence on all 41 Accused Products.
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`The basis for LoganTree’s request is a statement from counsel at summary judgment that
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`LoganTree takes out of context. As the Court will recall, Garmin’s summary judgment motion
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`relied on a simple fact—none of Garmin’s products write any data to the FIT files in response to
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`the step goal being met. Garmin’s counsel’s statements during the summary judgment hearing
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`were limited to this precise fact—none of Garmin’s Accused Products record a time stamp when
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`a Garmin user achieves their step goal. Id. at 6. As counsel explained, the Court could find that
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`single fact and grant summary judgment for each of the 41 Accused Products. LoganTree,
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`however, seeks to broaden that statement into an admission that each product’s hardware and
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`software for counting steps is precisely the same. Such a sweeping generalization is unsupported
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`by the record. Id. (noting the Accused Products’ lack of action for the step goal is “consistent,” but
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`not making any comment as to the specifics of how that operation is performed by five different
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`bodies of source code). Moreover, the statements made at summary judgment referred only to one
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`single aspect of one single limitation in Asserted Claim 1—the timestamp limitation. The Court
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`did not ask, and counsel was not discussing, the myriad other claim limitations that LoganTree
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`must prove are found in the Accused Products, such as the claimed hardware and additional
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`claimed functionalities. Id.
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`ECF No. 1-3, ’576 Patent Reexam Certificate, at 1:25–50 (annotations added). The highlighted
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`portions of Claim 1 above were not even at issue at summary judgment and were not being
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`discussed by the parties. There is no basis for LoganTree to now claim all 41 Accused Products
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`operate the same in this regard. And there are two additional asserted claims that were not even
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`being discussed at summary judgment that also include additional limitations not at issue during
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`summary judgment.
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`Moreover, LoganTree’s own expert report by Mr. Monty Myers shows there are
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`differences between the products that relate to the limitations in the claims. For example:
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`(1) Myers grouped Garmin’s Vivomove and Vivomove HR in the same group in his expert
`report, but the Vivomove only has one microprocessor, while the Vivomove HR has
`multiple microprocessors connected to various components;
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`(2) Myers grouped the Fenix 5X with the Fenix 5 Plus and the Forerunner 935, but the
`Fenix 5X has three microprocessors, while the Fenix 5 Plus and Forerunner 935 each
`have two;
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`(3) Myers grouped the Fenix 5X and Forerunner 935, but the Fenix 5X has two
`accelerometers, while the Forerunner 935 only has one.
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`In each of these cases, Myers not only failed to conduct an independent analysis into the other
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`Accused Products, he made no attempt to ascertain whether those other Accused Products contain
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`the same hardware structure, the same type or number of microprocessors/accelerometers, whether
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`that same microprocessor/accelerometer is responsible for allegedly performing the claimed
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`functions, or whether multiple microprocessors/accelerometers may be involved in allegedly
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`performing the claimed functions in those other Accused Products. That the number and types of
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`hardware in the Accused Products differs between products has additional significance here. Claim
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`1 not only requires the presence of certain hardware but demands that the hardware accused of
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`performing the accused functionality have specific connections to the other hardware
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`components. See ECF No. 1-3, at 1:25–50. The specific microprocessor LoganTree accuses of
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`performing the accused step counting and step goal functionalities must be connected to the power
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`source, to the specific, accused movement sensor that measures the accused movement data, to the
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`real-time clock, and to the output indicator. Id. Because Garmin’s Accused Products have different
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`hardware and different interconnections between that hardware, there is no basis for Garmin to
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`agree that its products are similar. It is LoganTree’s burden to prove its case and, by extension,
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`each of these specific connections required by Claim 1.
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`This is likely why LoganTree now seeks to use the summary judgment discussion to
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`shortcut its trial presentation. These examples all demonstrate the inadequacy of Myers’ and
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`LoganTree’s evidentiary support for the 36 Accused Products they failed to investigate, and why
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`it should not be permitted to rely on the five Accused Products in Myers’ report as evidence for
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`the remaining 36 Accused Products. LoganTree made no attempt to ascertain whether those 36
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`Accused Products utilize the same hardware in the same configuration to allegedly perform the
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`same functions as the five Accused Products in his report, or to ensure those 36 Accused Products
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`do not use entirely different hardware, or multiple hardware components of similar types, or having
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`connections to different hardware, to allegedly perform the claimed functions from those utilized
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`by the five Accused Products in Myers’ report.
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`In sum, it is LoganTree’s burden to prove that all 41 of the Accused Products infringe the
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`asserted claims. LoganTree has never contended, let alone proven, that the five Accused Products
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`in Myers’ report were representative of the remaining 36 Accused Products. As such, LoganTree
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`is required to convince the jury under its burden to prove infringement that all 41 Accused Products
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`infringe. For at least these reasons, LoganTree should not be permitted to cure its prior defects
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`through an evidentiary motion, and its motion should be denied.
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`B. Motion in Limine #2 – LoganTree’s Second Motion in Limine Would Improperly
`Limit Garmin’s Discussion of the Claim Limitations at Issue at Trial
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`LoganTree’s second motion in limine amounts to a request to preclude Garmin from
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`discussing the claim limitations as they are written in the ’576 Patent. There is no support in the
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`law for LoganTree’s motion. Of course, Garmin acknowledges the Court has construed the time
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`stamp limitation and will rely on that claim construction as it presents its non-infringement case at
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`trial. If that is all LoganTree is seeking, Garmin has no qualms with this motion. But the broad,
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`subjective language in LoganTree’s motion seeking to preclude Garmin from presenting what it
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`deems is a “suggestion” of what the claim requires opens the door to LoganTree arguing that
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`Garmin is foreclosed from even identifying the claim limitations for the jury, or to trying to punish
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`Garmin if its counsel fails to recite the limitation verbatim each time they must address the
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`limitation. If that is the relief LoganTree is requesting, it is unreasonable and unworkable.
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`Moreover, any concerns LoganTree has about the jury applying this Court’s claim construction
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`are alleviated by the parties’ agreed jury instructions. See ECF No. 258, at Instruction No. 5.
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`Further still, should a concern emerge at trial that the jury has been told to ignore the Court’s
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`construction, a corrective instruction from the Court, rather than a blanket prohibition on reciting
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`or paraphrasing the limitation, is the reasonable remedy for alleviating that concern. Accordingly,
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`LoganTree’s motion should be denied.
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`C. Motion in Limine #3 – LoganTree’s Third Motion in Limine is Overbroad and Seeks
`to Prevent Garmin from Educating the Jury on the Technology, the Accused
`Products, and Damages
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`At the outset, LoganTree’s authority for its motion stands only for the noncontroversial
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`position that Garmin cannot argue its Accused Products do not infringe because they practice the
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`prior art or that its products are nonobvious over the prior art. ECF No. 247, at 5–6. Garmin has
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`no plans to make such an argument at trial. Yet, that is not what LoganTree asks this Court to
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`prevent Garmin from presenting at trial. Instead, LoganTree asks the Court to exclude “any
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`references, evidence, testimony, [or] arguments comparing the accused devices to prior art.” Id.
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`at 5 (emphasis added). This broader request finds no support in LoganTree’s authority. Garmin
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`should be free to present arguments and evidence about prior art to aid the jury in understanding
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`the technology. And Garmin itself has prior art products that are indisputably relevant to Garmin’s
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`story, its product development history, and how the Accused Products came to be. Lastly, Garmin
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`should be permitted to cross-examine LoganTree’s damages expert, Dr. Volkov, on any prior art
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`to the extent it relates to his failure to apportion his proposed royalties. LoganTree’s authority does
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`not prevent such arguments, evidence, or testimony. As with LoganTree’s other motions, if
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`LoganTree believes it has been suggested that Garmin does not infringe because it practices the
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`prior art, the proper remedy is to request a correcting instruction. For at least these reasons,
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`LoganTree’s motion should be denied.
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`D. Motion in Limine #4 – LoganTree’s Attempt to Prevent Garmin from Discussing the
`’576 Patent’s own Specification, Mr. Brann’s Development of the Claimed Invention,
`and LoganTree’s Commercial Embodiment is Unsupported by the Law
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`LoganTree posits its fourth motion in limine as seeking to preclude testimony that the
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`claims of the ’576 Patent are limited to workers compensation claims or back angles on lifting
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`heavy objects. Garmin obviously is not going to offer evidence or argument that the claims are
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`limited in this manner when no such limitations are present in the claims. However, it is
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`unquestionably proper for Garmin to discuss the historical development of the invention and the
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`context surrounding the invention, including the description of the invention provided by Mr.
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`Brann in his patent specification and his product—the BackTalk device—which was sold to
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`prevent back injuries. This information is a fundamental part of the patent story. If LoganTree's
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`position is limited to ensuring Garmin will not suggest the claims are limited or that the jury’s
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`analysis should compare the BackTalk device to the Garmin Accused Products, then there is no
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`dispute between the parties. If, however, LoganTree seeks to prevent Garmin from telling the story
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`surrounding LoganTree’s patent, there is no legal authority to support such a broad position and
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`such an order would exclude a large volume of relevant evidence that is standard in patent cases.
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`As an initial matter, there is no dispute that the BackTalk practices the ’576 Patent. The
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`BackTalk device was the result of the same idea that led to the ’576 Patent. Indeed, LoganTree
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`submitted an interrogatory response admitting the BackTalk device practices the claimed
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`invention:
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`Ex. A, LoganTree’s 7/15/2020 Amended Obj. and Resp. to Garmin’s 4th Rogs. When Garmin noted
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`LoganTree’s response was still insufficient, LoganTree again amended its response and agreed to
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`provide a claim chart to support its claim the BackTalk was a commercial embodiment. Ex. B,
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`Excerpts from 08/05/2020 Amended Obj. and Resp. to Garmin’s 4th Rogs.
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`Then, LoganTree's corporate representative, Jeremy Brann, the son of the inventor and the
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`sole fact witness that plans to appear at trial, admitted the BackTalk device does precisely what is
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`claimed in the ’576 Patent:
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`Ex. C, Excerpts from 4/30/21 J. Brann Depo. Trans., at 99:10–13 (emphasis added).
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`Ted Brann, the inventor of the ’576 Patent, also sold the BackTalk device with a
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`conspicuous sticker attached to it indicating the BackTalk device was protected by the ’576 Patent:
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` GARMIN_0273844. It is simply beyond dispute that LoganTree believes the BackTalk device is
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`the commercial embodiment of the ’576 Patent.
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`Similarly, it is beyond dispute that Mr. Brann described the purpose of the ’576 Patent as
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`helping to “prevent incorrect movement in hopes of reducing injuries, lost man hours, and
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`workmen’s compensation claims[.]” ECF No. 1-2, ’576 Patent, at 1:58–60. These are, of course,
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`Mr. Brann’s own words about the purpose and goal of his invention and the very words he used in
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`the patent itself contemporaneous with his invention. The jury is entitled to consider Mr. Brann’s
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`words in its overall assessment of the credibility of LoganTree’s assertions in this case, and it is
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`entitled to consider his commercial efforts involving the patented technology in the context of
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`assessing LoganTree’s valuation of the alleged damages at issue in this case.
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`The law does not support LoganTree’s overbroad request. Courts have consistently rejected
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`attempts to exclude arguments or evidence as to the patent’s specification, preferred embodiments,
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`and commercial embodiments. See Exmark Mfg. Co. Inc. v. Briggs & Stratton Power Prods. Grp.,
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`LLC, No. 8:10-CV-187, 2015 WL 5177759, at *7 (D. Neb. Sept. 4, 2015), aff’d in part, vacated
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`in part, 879 F.3d 1332 (Fed. Cir. 2018) (vacated on other grounds)); see also Voda v. Medtronic
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`Inc., 899 F. Supp. 2d 118, 1201 (W.D. Okla. 2012); Papst Licensing GmbH & Co., KG v. Samsung
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`Elecs. Co. Ltd., No. 6:18-CV-00388-RWS, 2018 WL 10126729, at *1 (E.D. Tex. Oct. 25, 2018).
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`For example, in Exmark, the District of Nebraska rejected a similar motion in limine to preclude
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`discussion of preferred embodiments (or examples) listed in the patent specification, or of the
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`commercial embodiments (the products built by the patent owner using the patent). Exmark, 2015
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`WL 5177759, at *7.
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`In rejecting the very arguments LoganTree now presents about jury confusion, the Exmark
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`court noted that there will be no confusion because the jury instructions will clearly tell the jury to
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`perform a comparison between the accused products and the patent claims. Exmark, 2015 WL
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`5177759, at *7. Garmin will not be saying anything different, and courts have consistently held
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`that jury instructions are sufficient to prevent any confusion. Voda, 899 F. Supp. 2d at 1201 (noting
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`the issuance of a jury instruction directing the jury to “determine infringement by focusing on the
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`claims of the [asserted patent],” among other things, refuted defendants’ argument the Court
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`committed plain error by allowing the plaintiff to compare the defendants’ product to the
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`commercial embodiment). Indeed, the parties already have agreed to very clear jury instructions
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`in this case. Instruction numbers 2 and 3 instruct the jury that infringement is assessed by
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`comparing the Accused Products only to the asserted claims and also caution the jury against
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`relying on the patent’s description and figures in making its infringement determination. See ECF
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`No. 258, at Instruction Nos. 2–3. Any concern LoganTree has is fully remedied by the agreed upon
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`jury instructions. To the extent LoganTree’s motion seeks to exclude Garmin from discussing the
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`story, context, and history surrounding the ’576 Patent, including discussion of the BackTalk
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`device and the ’576 Patent specification, it should be denied.
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`E. Motion in Limine #5 – The Law Permits Garmin to Present Evidence of LoganTree’s
`Own Prior Inconsistent Characterizations of the Claimed Invention to the Jury
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`As a threshold matter, Garmin is not presenting a prosecution history estoppel at trial. See
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`generally ECF No. 187. Thus, Garmin will not argue to the jury that LoganTree has legally
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`disclaimed the scope of the claimed invention in light of its prior statements to the PTAB, either
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`during prosecution or throughout Garmin’s inter partes review proceedings. As with LoganTree’s
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`prior motions, if that is the extent of the relief LoganTree is requesting, there is no dispute between
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`the parties. But LoganTree’s motion appears to go further, seeking to preclude Garmin from
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`offering argument or evidence that LoganTree decides suggests that it disclaimed claim scope.
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`ECF No. 247, at 7–8. As written, Garmin has concerns that LoganTree’s request would foreclose
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`Garmin from discussing LoganTree’s own prior statements as to its belief of what its own claimed
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`invention is and from pointing out that what it is telling the jury differs from what it told the PTAB.
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`LoganTree’s motion has no basis in the law. Accordingly, Garmin requests the Court deny
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`LoganTree’s motion.
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`As is well-documented at this point, LoganTree has repeatedly flipflopped on its
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`characterization of the scope of the claimed invention, to the point that this Court has once already
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`concluded that LoganTree’s tactics appear to have been motivated by gamesmanship. See ECF
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`No. 186, at 25–29. Now, having survived challenges to the validity of the ’576 Patent, LoganTree
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`seeks to erase that history entirely. Id. at 29 (“Garmin contends ‘LoganTree’s motives are clear—
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`it needed to maintain its arguments on where the processor was located to sustain validity, but,
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`now that it has, LoganTree changed its argument in an attempt to save its infringement case here.’
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`. . . LoganTree’s lack of any direct response to these serious allegations leaves the court to conclude
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`that there is no explanation for LoganTree’s new infringement theories other than they appear to
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`have been motivated by gamesmanship.”). But nothing in the law prevents Garmin from assessing
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`LoganTree’s credibility at trial if it makes statements that are inconsistent with, or in direct
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`opposition to, statements made by LoganTree to the Patent Office during prosecution or the ex
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`parte reexam. This is a standard approach to cross examination where the jury can assess
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`LoganTree’s credibility if it says something inconsistent. And in this regard, there is no law that
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`would prevent Garmin from presenting this evidence to the jury as part of its cross examinations.
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`Of course, if LoganTree does not make any inconsistent statements, then these issues will never
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`be raised by the jury. See Paice LLC v. Hyundai Motor Co., No. MJG-12-499, 2015 WL 13921493,
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`at *1–*2 (D. Md. Sept. 18, 2015) (denying motion in limine to exclude argument, evidence, or
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`testimony concerning any IPR and noting it would issue a cautionary instruction as necessary that
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`made clear the jury is permitted to consider as part of its evaluation of the evidence any statements
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`Paice had made in the IPR proceedings that the jury finds are different from what the jury was told
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`at trial).
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`F. Motion in Limine #6 – Garmin does not Oppose LoganTree’s Sixth Motion in Limine
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`After further consideration and having the benefit of LoganTree’s memorandum in support
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`of its sixth motion in limine, Garmin does not oppose.
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`III. CONCLUSION
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`Garmin respectfully requests the Court grant Garmin’s motions in limine and preclude
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`LoganTree from presenting the above arguments, testimony, or evidence to the jury.
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`Case 6:17-cv-01217-EFM Document 261 Filed 10/13/22 Page 13 of 13
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`Dated: October 13, 2022
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`Respectfully submitted,
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`ERISE IP, P.A.
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`/s/ Adam P. Seitz
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`Adam P. Seitz, KS Bar #21059
`Megan J. Redmond, KS Bar #21999
`Carrie A. Bader, KS Bar #24436
`Clifford T. Brazen, KS Bar #27408
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`adam.seitz@eriseip.com
`megan.redmond@eriseip.com
`carrie.bader@eriseip.com
`cliff.brazen@eriseip.com
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`Attorneys for Defendant Garmin
`International, Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on October 13, 2022, the foregoing document filed with the Clerk of
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`the Court using CM/ECF and that all counsel of record who are deemed to have consented to
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`electronic service are being served with a copy of this document via the Court’s CM/ECF system
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`accordingly.
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`By: /s/ Adam P. Seitz
` Adam P. Seitz
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`13
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