Case 6:17-cv-01217-EFM Document 270 Filed 10/17/22 Page 1 of 8
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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 TRIAL BRIEF
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`Pursuant to this Court’s Trial Scheduling Order (ECF No. 229), Garmin submits its Trial
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`Brief in support of the case it will present at trial, and to aid the Court with the relevant history of
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`the case and to make it aware of serious concerns Garmin has that LoganTree will introduce new
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`theories and evidence, which includes theories already stricken by this Court.
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`I.
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`LOGANTREE’S STRICKEN INFRINGEMENT THEORIES AND EVIDENCE
`AND SUBSEQUENT ATTEMPTS TO REINTRODUCE THEM
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`This Court already concluded that LoganTree repeatedly attempted to skirt this Court’s
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`rules and orders. Specifically, the Court’s order provided a comprehensive history of LoganTree’s
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`antics and the resulting harm it caused to Garmin and this case. See generally ECF Nos. 138; 186.
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`Below, Garmin highlights the relevant aspects of that history here.
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`As the Court knows, the local rules require a plaintiff to disclose their infringement theory
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`early in the case and, in this case, provided for “final” infringement contentions. L.P.R. 3-1. The
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`purpose of these requirements is to force the plaintiff to explain their infringement theory, so the
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`parties can focus discovery and expert reports on the correct theory of infringement. Significantly,
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`this means the parties do not play hide the ball regarding the infringement theory. Unfortunately,
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`Case 6:17-cv-01217-EFM Document 270 Filed 10/17/22 Page 2 of 8
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`LoganTree ignored these requirements and is now attempting to change its position after 5 years
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`of litigation.
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`LoganTree’s infringement theory in this case had always been the same, at least until it
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`served LoganTree’s expert report of Mr. Monty Myers. Prior to Myers’ report, LoganTree’s
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`infringement theory was solely based on when users set a manual step goal. Myers’ report
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`attempted to inject new theories centered around Garmin’s goal streak feature (how many days in
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`a row the user meets their step goal) and the related step goal multiples (when a user meets their
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`step goal multiple times in a single day). Myers also attempted to interject new theories of
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`infringement based on functions performed by a separate software, the Garmin Connect app. ECF
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`No. 186, at 12.
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`The reasons LoganTree made these last-minute changes are clear. First, LoganTree
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`repeatedly characterized the scope of the invention in a narrow manner in order to survive
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`challenges to the ’576 Patent’s validity by Garmin at the PTAB, and in the District of Delaware.
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`Specifically, LoganTree argued the claims required a single microprocessor that performed all the
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`relevant claim limitations. Second, rather than conducting discovery to support its infringement
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`theory, LoganTree sat on its hands. LoganTree did not even attempt to review Garmin’s source
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`code or talk to Garmin’s engineers about the microprocessor(s) in Garmin’s products. Notably, the
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`source code (i.e., the “instructions” explain how the Accused Products are programmed) is
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`required to prove the microprocessor limitation. Those failures are especially critical here. The
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`asserted claims set forth specific requirements as to what the Accused Products’ microprocessors
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`must perform. But what functions those microprocessors perform and how they perform those
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`functions are dictated by the source code. Here, the Accused Products’ source code completely
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`Case 6:17-cv-01217-EFM Document 270 Filed 10/17/22 Page 3 of 8
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`failed to evidence LoganTree’s infringement theory. Thus, LoganTree had no choice but to try to
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`change its infringement theory at the 11th hour.
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`And the Court agreed that LoganTree wrongly attempted to change its theories and it was
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`unfair to Garmin. For example, Garmin asked the Court to strike LoganTree’s new mapping of the
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`Goal Streak and Multiple Daily Step Goals:
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`First, to the extent LoganTree is arguing Goal Streak merely “demonstrates” the
`operation of Step Goal, this is false. Goal Streak, unlike Daily Step Goals, is not a
`“user-defined” event based on “user-defined parameters” as the claim requires. It
`is simply a “counter” that a user can never adjust or set. A non-user defined
`functionality cannot be “demonstrative” of a user-defined functionality. And, Mr.
`Myers does far more than use Goal Streak as an example of Step Goal. Instead, he
`includes an extensive discussion of the Goal Streak source code and its (alleged)
`timestamps and maps Goal Streak to the claims. Mr. Myers relies on Goal Streak
`to meet the limitations of the claims, not merely as an example of Step Goal.
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`ECF No. 169, at 1–2 (bold italics added); see also ECF No. 158, at 3–6.
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`Agreeing with Garmin, the Court went even further, concluding “there is no explanation for
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`LoganTree’s new infringement theories other than that they appear to have been motivated by
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`gamesmanship.” ECF No. 186, at 29. And the Court’s resulting order on what it was striking was
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`unambiguous:
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`LoganTree’s infringement contentions did not provide Garmin with reasonable
`notice that LoganTree was relying on any user-defined functionality other than the
`user’s daily step-count goal. Those contentions identified the user’s daily step-
`count goal set via the user’s Garmin Connect account—and only this daily step-
`count goal—as the ‘first user-defined event.’ If LoganTree was going to rely on
`any other user-defined functionality, LoganTree was required to identify all
`Accused Instrumentalities (e.g., Garmin Connect) with specificity . . . LoganTree’s
`contentions did not identify the number of consecutive days a user meets their
`daily step-count goal (Goal Streak) or the number of times the user meets the
`daily step count goal in a given day as ‘user-defined events.’ These features are
`not even user defined. They are built-in automatic counting features. . . . These
`features are therefore not ‘demonstrative’ of the user meeting the daily step-count
`goal, nor are they user-defined functionality[.]
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`The court strikes all theories relying on Goal Streak and all theories relying on
`Garmin Connect as they relate to the “detecting” and “storing” limitations.
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` ECF No. 186, at 17–18, 35 (emphasis added).
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`Garmin also informed LoganTree’s new counsel about these issues. In fact, Garmin
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`explained the proceedings in the case, how LoganTree continually stalled, delayed, blew through
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`deadlines, and ignored the Court’s rules and order. LoganTree ignored this and the gamesmanship
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`continued. At the summary judgment hearing, LoganTree presented stricken source code to the
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`Court as alleged evidence in support of its infringement theory. 09/01/2022 MSJ Hr’g Trans, at
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`57:13–58:8, 76:25–77:11. And in preparation for trial, LoganTree filed its exhibit list and doubled-
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`down on its intent to ignore the Court’s order striking its improper infringement theories by
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`including on its trial exhibit list dozens of exhibits that were the exact evidence this Court had
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`already stricken from Myers’ report. ECF Nos. 253-3, 253-4.
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`Finally, with just 11 days until trial, LoganTree continues to press forward with its stricken
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`theories. LoganTree ignores the Court’s prior order and contends it did not apply to ANY
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`functionality on the device. This is false. The Court’s own language makes it abundantly clear; the
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`Court struck all Goal Streak and Garmin Connect theories outright. Hard stop! As the Court
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`observed, LoganTree never disclosed Goal Streak or Garmin Connect as part of its infringement
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`theory and was barred from raising these theories.
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`The introduction of these new theories and evidence at trial violates this Court’s local rules,
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`this Court’s prior order, and is enormously prejudicial to Garmin. The introduction of this evidence
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`will warrant setting aside the jury verdict, a new trial, or reversal at the Federal Circuit. LoganTree
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`should be ordered to do what it should have done of its own accord already—abide by the Court’s
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`prior rulings.
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`II.
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`LOGANTREE WILL NOT BE ABLE TO MEET ITS BURDEN OF PROVING
`DAMAGES
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` “The burden of proving damages falls on the patentee.” Lucent Techs., Inc. v. Gateway,
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`Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009). LoganTree contends it is “entitled to an award of
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`damages in the amount of not less than a reasonable royalty.” ECF No. 187, at 34. In such cases,
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`the Federal Circuit’s “law recognizes that a reasonable royalty award ‘must be based on the
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`incremental value of that the invention adds to the end product.’” Exmark Mfg. Co. Inc. v. Briggs
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`& Stratton Power Prods. Grp., LLC, 879 F.3d 1332, 1348 (Fed. Cir. 2018) (quoting Ericsson, Inc.
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`v. D-Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014)). Garmin will establish at trial that, as
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`a matter of fact and law, LoganTree wholly failed all the basic LEGAL requirements of patent
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`damages:
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`• Apportionment – Required as a matter of law.
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`• Technical and economic comparability – Required as a matter of law.
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`• Royalty is to the incremental value of the manual step goal functionality – Required
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`as a matter of law.
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`• Plucking royalty rates out of thin air – Barred as a matter of law.
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`• Showing entire revenue amounts – Barred as a matter of law.
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`First, Volkov admits he did not apportion. This means his opinions are clear error and
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`contrary to the Federal Circuit authority. This is one of the most frequent reasons the Federal
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`Circuit reverses jury verdicts. Despite this, Volkov refused to perform this basic requirement. As
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`background, “apportionment” refers to the Supreme Court’s mandate that the patentee must, in
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`every case, “separate” out its damages from the value of all the unpatented components and
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`features of the Accused Products to ensure the patentee is only compensated for the value of the
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`claimed invention, and nothing more. Power Integrations, Inc. v. Fairchild Semiconductor Int’l,
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`Inc., 904 F.3d 965, 977 (Fed. Cir. 2018). Here, Volkov admits “I did not apportion,” which means
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`there is no evidence of damages. Finjan, 879 F.3d at 1309.
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`Second, Volkov admits he did not perform any technical comparability analysis because
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`he is not an engineer. And Volkov also failed to do any economic comparability analysis. These
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`are both required by the Federal Circuit as a matter of law. VirnetX, Inc. v. Cisco Sys., Inc., 767
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`F.3d 1308, 1330 (Fed. Cir. 2014); Apple Inc. v. Wi-Lan Inc., 25 F.4th 960, 972 n.5 (Fed. Cir. 2022)
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`(citing Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC, 927 F.3d 1292, 1299 (Fed. Cir.
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`2019)). Instead of following the law, Volkov just wholesale used certain other Garmin’s licenses
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`without any comparability analysis. As background, to use any prior license, it must sufficiently
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`similar both in the technology and/or patents it covers, and in terms of economics (e.g., the
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`respective size of the licensee and licensor; the scope and duration of the license, the number of
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`patents being licensed, the licensing policies of the parties, etc.). It is LoganTree’s burden to prove
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`that an existing license satisfies the threshold level of comparability to be admissible. If it does not
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`make that showing, which LoganTree did not here, the prior existing licenses must be excluded.
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`See id.
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`Third, the manual step feature is all that is accused, but very few Garmin users use this
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`feature. Therefore, Volkov’s damages were not limited to the claimed invention, which too violates
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`the law. Even more, Garmin will show that the value Garmin receives from the Accused Products
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`is derived, primarily, from features that have not been accused of infringement. For example, the
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`Quatix model watches, are designed specifically for sailors and marine enthusiasts. Among its
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`sailing and marine specific features are (1) sailing assistance; (2) anchor assist; (3) tide data; and
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`(4) fishing. Garmin will also highlight the D2 Charlie model watch, specifically designed for pilots.
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`Among its flying specific features are (1) altitude alerts; (2) barometric pressure; (3) flight
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`navigation; and (4) flight plan creation and management. As Volkov admits, the value of Garmin’s
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`watches is driven primarily by these other features.
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`Fourth, Volkov proffered “illustrative” 1%, 2%, and 3% royalty rates. Plucking these
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`illustrative rates out of thin air is not permissible under Federal Circuit law and is reversible error
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`as LoganTree well knows. Exmark, 879 F.3d at 1351; Uniloc USA, Inc. v. Microsoft Corp., 632
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`F.3d 1292, 1315 (Fed. Cir. 2011).
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`Fifth, Volkov reliance on the total revenues Garmin received from the Accused Products
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`as his royalty base is a clear violation of established Federal Circuit law. A patentee cannot rely
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`on the total revenues of a multi-component product, which the Accused Products indisputably are,
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`that has non-infringing components and features, which the Accused Products indisputably do.
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`LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 67 (Fed. Cir. 2012). Volkvo ignores
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`this well-established law, which dictates that the harm to Garmin is irreparable because any royalty
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`will seem small as compared to the revenue number. Id.
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`This case is unique in that LoganTree has not presented a single viable damages theory that
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`has ever been accepted by the Federal Circuit. Not a single one. Instead, every analysis performed
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`by Dr. Volkov has been soundly rejected by the Federal Circuit. LoganTree’s only response is
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`diversion—to suggest that Garmin has somehow “waived” this issue by not raising it at Daubert.
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`But under existing 10th Circuit precedent the Court must perform its gatekeeping role at some
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`point, whether that is before trial, during a voir dire before Dr. Volkov testifies, or after the
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`conclusion of the case in the context of a motion for remittitur. Garmin strongly believes that the
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`presentation of such evidence would be prejudicial to Garmin and would taint the jury and,
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`therefore, it should be addressed before Dr. Volkov testifies. Nonetheless, if the Court does not
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`address LoganTree’s legally flawed damages theory prior to Dr. Volkov’s testimony, and if
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`Case 6:17-cv-01217-EFM Document 270 Filed 10/17/22 Page 8 of 8
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`LoganTree is successful at trial, then Garmin will present these same issues to the Court to address
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`in a motion for remittitur.
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`Dated: October 17, 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 17, 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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