Case 6:17-cv-01217-EFM-KGS Document 37 Filed 02/13/19 Page 1 of 8
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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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`GARMIN INTERNATIONAL, INC. and
`GARMIN USA, INC.,
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`Plaintiff,
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`Defendants.
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` Case No. 17-1217-EFM-KGS
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`MEMORANDUM AND ORDER
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`Defendants Garmin International, Inc., and Garmin USA, Inc. (collectively “Garmin”)
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`move this Court for a stay pending inter partes review (“IPR”) of the patent in suit. In addition,
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`Garmin moves the Court for an intra-district transfer for trial to Kanas City, Kansas. As explained
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`below, the Court grants Garmin’s motion to stay the case until the Patent Trial and Appeal Board
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`(“PTAB”) issues its decisions regarding Garmin’s IPRs. Furthermore, because the PTAB’s
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`decision could simplify the issues in the case such that Plaintiff LoganTree LP no longer has a
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`claim for infringement, the Court denies Garmin’s motion for intra-district transfer for trial without
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`prejudice.
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`I.
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`Factual and Procedural Background
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` Plaintiff LoganTree LP filed this patent infringement suit on August 23, 2017, alleging
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`that Garmin’s accelerometer-based activity trackers infringe its U.S. Patent No. 6,059,576 (the
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`Case 6:17-cv-01217-EFM-KGS Document 37 Filed 02/13/19 Page 2 of 8
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`‘576 Patent). In February 2018, Garmin filed two petitions for IPR with the PTAB covering 52 of
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`the 185 claims of the ‘576 Patent. LoganTree did not file a Patent Owner Preliminary Response,
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`and on August 30, 2018, the PTAB instituted the IPRs on all grounds. The PTAB is expected to
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`complete the proceedings and issue its final decisions by August 30, 2019.
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`In August 2018, Garmin moved for intra-district transfer for trial to Kansas City, Kansas
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`(Doc. 26). It also filed a Motion to Stay Case Pending Inter Partes Review of the ‘576 Patent
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`(Doc. 32). Because of Garmin’s motion to stay the case, the Court cancelled the scheduling
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`conference set for September 18, 2018. As a result, the parties have not served or completed any
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`discovery, infringement contentions, or invalidity contentions.
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`II.
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`Legal Standard
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`The Court considers three factors when deciding whether to stay judicial proceedings
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`pending IPR: “(1) whether discovery is complete and a trial date has been set; (2) whether a stay
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`will simplify the issues in question and trial of the case; and (3) whether a stay would unduly
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`prejudice or present a clear tactical disadvantage to the nonmoving party.”1 These factors help the
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`Court to determine “whether the benefits of a stay outweigh the inherent costs of postponing
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`resolution of the litigation.”2 In the District of Kansas, there is a “liberal policy in favor of granting
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`motions to stay proceedings pending the outcome of [the PTAB’s] reexamination or reissuance
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`1 Digital Ally, Inc. v. Taser Int’l, Inc., 2017 WL 1048351, at *2 (D. Kan. 2017) (citations omitted).
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`2 Id.
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`Case 6:17-cv-01217-EFM-KGS Document 37 Filed 02/13/19 Page 3 of 8
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`proceedings.”3 The moving party bears the burden of showing that a stay is appropriate, and this
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`showing must include more than the simple fact that an IPR was filed.4
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`III. Analysis
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`A.
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`Garmin’s Motion to Stay
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`1.
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`Stage of Litigation
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`The first factor the court considers in determining whether to stay the case is the stage of
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`the proceedings. This case is in its infancy. Upon the filing of Garmin’s motion, the court
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`postponed the initial scheduling conference. No schedule has been set; no discovery has been
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`conducted; no depositions have been conducted, and no Markman hearing has been set. The
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`parties have only exchanged Rule 26 initial disclosures. LoganTree claims that this case has been
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`active for almost two years and should not be delayed any further. The Court acknowledges that
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`this lawsuit was initially filed in the Western District of Texas, but there was no action in the Texas
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`litigation that would weigh against granting a stay. Therefore, because this lawsuit is in its initial
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`stages, this factor weighs in favor of a stay.5
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`2.
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`Simplification of the Issues
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`The second factor the Court considers is whether a stay of this litigation pending Garmin’s
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`IPRs will result in the simplification or elimination of the issues for the Court to consider in this
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`case. The ’576 Patent contains 185 claims. Three of these claims are independent (claims 1, 13,
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`3 Id. (quoting Norred v. Medtronic, Inc., 2014 WL 554685, at *1 (D. Kan. 2014)).
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`4 Id. at *2.
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`5 See Norred, 2014 WL 554685, at *2 (finding that case was in its infancy where little discovery had taken
`place even when the dispute arose two years before filing); Digital Ally, 2017 WL 1048351, at *2 (granting a stay
`even when the parties conducted significant discovery, exchanged contentions, and claim construction).
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`and 20) and the remaining 182 claims are dependent on claims 1, 13, or 20. At this point,
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`LoganTree has not specifically identified which of the 185 claims in the ‘576 Patent it intends to
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`assert against Garmin.
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`Garmin’s IPRs challenge 50 the ‘576 Patent’s claims, including the three independent
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`claims.6 Garmin contends that the IPRs will cover all of the claimed subject matter that could
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`possibly be asserted against it in this litigation, and thus will simplify or eliminate all of the issues
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`for trial. In response, LoganTree argues that simply because the PTAB is going to review all of
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`the challenged claims does not necessarily mean that Garmin will be successful. LoganTree points
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`out that PTAB found that Garmin failed to show a reasonable likelihood of prevailing on 11 of the
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`50 challenged claims.7 LoganTree further argues that even if Garmin is successful on all of its
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`challenged claims, the subject matter of the 50 challenged claims does not overlap with the
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`remaining unchallenged claims of the ‘576 Patent.
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`After considering the parties’ arguments, the Court concludes that the PTAB’s decisions
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`will help simplify or eliminate the issues in this case. Although LoganTree contends that the
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`unchallenged claims do not contain overlapping subject matter with the challenged claims,
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`LoganTree has not identified a single claim that it could assert against Garmin in this litigation
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`that is not nearly identical to one challenged in the IPRs. Furthermore, the fact the PTO is only
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`reviewing some but not all of the ‘576 Patent’s claims does not mean that the PTAB’s decision is
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`6 Garmin did not separately challenge claim 13 under the same primary reference as claim 1 in its petitions
`for IPR. Garmin argues, however, that because claims 1 and 13 have overlapping subject matter, the PTAB’s decision
`on the patentability of claim 1 will carry over to claim 13.
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`7 The PTAB’s standard for instituting an IPR is “a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Thus, a petitioner need only
`establish a reasonable likelihood of proceeding on one claim for the PTAB to institute a review on all the challenged
`claims. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (stating that when the PTAB initiates an IPR it must
`review all of the challenged claims).
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`irrelevant or unhelpful to this litigation. Other courts have found that the benefits of a stay remain
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`even when only some of the litigated claims are being reviewed.8 As Garmin asserts, a stay
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`pending resolution of the IPRs has significant potential to eliminate asserted claims and invalidity
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`defenses in this case and will simplify the issues in this litigation. This factor weighs in favor of
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`a stay.
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`3.
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`Prejudice or Clear Tactical Disadvantage
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`The third factor that the Court must consider in determining whether to grant a stay is undue
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`prejudice or clear tactical disadvantage to the nonmoving party. In evaluating this factor, “courts
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`have taken a practical approach to determining whether the non-movant will suffer undue prejudice
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`from a stay. A court may deny a request for a stay where the movant has unjustifiably delayed
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`seeking reexamination, or where the stay will do nothing but delay the proceedings.”9 Mere delay
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`in the litigation does not establish undue prejudice.10
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`Garmin argues that a stay pending Garmin’s IPRs would not unduly prejudice LoganTree.
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`Garmin argues that LoganTree is not a competitor of Garmin and has no products on the market
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`embodying the claims of the ‘576 Patent. Thus, according to Garmin, any purported harm to
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`LoganTree may be fully compensated with money damages. Garmin also asserts that there is little
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`tactical disadvantage to LoganTree, where this litigation is in its early stages. IPRs must be
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`8 See Trading Technologies, Int’l, Inc. v. BCG Partners, Inc., 186 F. Supp. 3d 870, 875 (N.D. Ill. 2016)
`(compiling cases); Destination Maternity Corp. v. Target Corp., 12 F. Supp. 3d 762, 769 (E.D. Pa. 2014) (“courts
`have found significant potential for issue simplification even in cases where some but not all of the asserted claims
`are subject to PTO review”).
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`9 Digital Ally, 2017 WL 1048351, at *3 (quoting Dane Techs., Inc. v. Gatekeeper Sys., Inc., 2013 WL
`4483355, at *2 (D. Minn. 2013)).
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`10 Id. (citing Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1033 (C.D. Cal.
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`2013)).
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`disposed of within one year of being instituted, and thus Garmin argues that this should alleviate
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`any concerns LoganTree would have over delay.
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`LoganTree argues that it will be unduly prejudiced by a stay of this case. LoganTree
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`questions whether Garmin filed its IPRs in a timely manner, pointing out that the parties have been
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`litigating the issue for two years—first in the Western District of Texas and then in the District of
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`Kansas. LoganTree primarily argues, however, that a stay would be prejudicial because there is a
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`strong likelihood it will lose evidence during this time. According to LoganTree, the inventor of
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`the ‘576 Patent, Theodore Brann, has extensive health and medical issues, and a stay of any length
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`in this case would prevent Brann from being available to testify at trial.
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`The Court concludes that LoganTree will not be unduly prejudiced by a stay. Garmin does
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`not appear to have delayed in filing its IPRs, and in any event, the PTAB must issue its decisions
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`this year—by August 30, 2019.11 LoganTree does not dispute that it is not a competitor of Garmin,
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`and thus, LoganTree may be fully compensated by money damages.12 And, with regard to Brann’s
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`testimony, Garmin indicated in its Reply brief that it previously agreed to preserve Brann’s
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`testimony but LoganTree never proceeded with a preservation deposition. Garmin further
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`indicates that it is not opposed to taking Brann’s deposition during the stay. Accordingly, this
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`factor weighs in favor of a stay.
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`4.
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`Conclusion
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`Because the three factors weigh in favor of a stay, the Court grants Garmin’s Motion to
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`Stay Pending Inter Partes Review. The case is stayed until the PTAB issues its decision in
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`11 35 U.S.C. § 316(a)(11).
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`12 PersonalWeb Tech., LLC v. Facebook, Inc., 2014 WL 116340, at *5 (N.D. Cal. 2014).
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`Garmin’s IPRs. To the extent LoganTree seeks to preserve Brann’s testimony during the stay,
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`Garmin must agree to his deposition. In addition, the parties must file a joint report advising the
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`Court of the PTAB’s decision as well as the parties’ respective positions for further proceeding
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`with this case within 14 days of the PTAB’s decision on Garmin’s IPRs.
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`B.
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`Garmin’s Motion for Intra-District Transfer for Trial
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`Garmin asks the Court to transfer the trial forum from Wichita to Kansas City. Garmin
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`contends that not a single document or witness relevant to this case is in Wichita, and in fact, the
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`situs for its witnesses and documents is in Olathe, which is 20 miles from the Kansas City
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`courthouse. The Court, however, declines to address Garmin’s arguments at this time. As
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`previously noted, Garmin contends that its petitions for IPR cover all of the claimed subject matter
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`that could be asserted against it in this litigation. Thus, if Garmin is successful, it could eliminate
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`any infringement issues present in this case. Accordingly, the Court denies Garmin’s motion for
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`intra-district transfer for trial without prejudice. Should this litigation continue to proceed after
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`the PTAB issues its decisions on Garmin’s IPRs, Garmin may refile its motion at that time.
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`IT IS THEREFORE ORDERED that Garmin’s Motion to Stay Litigation Pending Inter
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`Partes Review (Doc. 32) is GRANTED. The case is stayed pending resolution of Garmin’s IPRs.
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`To the extent LoganTree seeks to preserve Brann’s testimony during the stay, Garmin must agree
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`to his deposition.
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`IT IS FURTHER ORDERED that the parties must file a joint report advising the Court
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`of the PTAB’s decision as well as the parties’ respective positions for further proceeding with this
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`case within 14 days of the PTAB’s decision on Garmin’s IPRs.
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`IT IS FURTHER ORDERED that Garmin’s Motion for Intra-District Transfer for Trial
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`(Doc. 26) is DENIED WITHOUT PREJUDICE.
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`IT IS SO ORDERED.
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`Dated this 13th day of February, 2019.
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`ERIC F. MELGREN
`UNITED STATES DISTRICT JUDGE
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