LOGANTREE LP
`
`
`Plaintiff,
`
`
`v.
`
`GARMIN INTERNATIONAL, INC.,
`GARMIN USA, INC., and GARMIN, LTD.
`
`
`Defendants.
`
`
`
`
`
`
`CIVIL ACTION NO. 6:17-CV-01217
`
`
`
`
`
`Case 6:17-cv-01217-EFM-ADM Document 39 Filed 09/11/19 Page 1 of 6
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
`
`
`
`
`
`
`
`
`
`
`
`LOGANTREE’S UNOPPOSED MOTION TO LIFT STAY OF LITIGATION
`PENDING INTER PARTES REVIEW
`
`
`Plaintiff LoganTree LP (“LoganTree”) respectfully asks this Court to lift the Stay of
`
`Litigation Pending Inter Partes Review of this case for the following reasons.
`
`I.
`
`SUMMARY OF THE CASE
`
`1.
`
`LoganTree filed several patent infringement claims against Defendants Garmin
`
`International, Inc., and Garmin USA, Inc. (collectively “Garmin”). After over a year of litigation,
`
`the Court granted Garmin’s motion to stay the pending litigation until the Patent Trial and Appeal
`
`Board (“PTAB”) made its decisions on the Inter Partes Reviews (“IPRs”) brought by Garmin
`
`challenging certain claims of U.S. Patent No. 6,059,576 (“Asserted Patent”). The PTAB has now
`
`issued its decisions on the IPRs fulfilling the complete purpose of the stay. The parties must still
`
`conduct discovery so that the underlying case may continue, and any further delay would
`
`needlessly impede the progress of the underlying case. Moreover, the PTAB decisions provide
`
`expert guidance to this Court and upholds the validity of the patent claims making further
`
`simplification of the issues unlikely. Further delay would also unduly prejudice LoganTree and
`
`
`LOGANTREE’S UNOPPOSED MOTION TO LIFT STAY OF LITIGATION PENDING INTER PARTES REVIEW
`
`
`1
`
`

`

`Case 6:17-cv-01217-EFM-ADM Document 39 Filed 09/11/19 Page 2 of 6
`
`provide Garmin with a tactical advantage by stalling the adjudication of LoganTree’s claims.
`
`Therefore, because the purpose of the stay is fulfilled and further delay would be needless, the
`
`Court should grant this Motion to Lift Stay.
`
`II.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`
`2.
`
`LoganTree originally filed its complaint in this action in the Western District of
`
`Texas on February 10, 2017. In February 2018, Garmin filed two petitions for IPR with the PTAB
`
`covering several claims under the U.S. Patent No. 6,059, 576 (the “’576 Patent”) that is the subject
`
`of this suit. On August 30, 2018, the PTAB instituted the IPRs on all grounds. Garmin then sought
`
`to stay this litigation pending the outcome of the IPRs which this Court granted in February 2019.
`
`On August 28, 2019, the PTAB issued its two decisions which upheld the validity of all challenged
`
`claims. See Exhibit A and Exhibit B (PTAB’s Final Written Decisions in IPR2018-00564 and
`
`IPR2018-00565). Because the PTAB has rendered its decisions, LoganTree files this request to lift
`
`the stay.
`
`III. LEGAL STANDARD
`
`3.
`
`When the Court is determining whether to lift a stay of judicial proceedings, the
`
`Court will consider the same three factors that it considered when granting the stay. Personal
`
`Audio, LLC v. Google, Inc., 230 F. Supp. 3d 623, 626–27 (E.D. Tex. 2017). First, the Court will
`
`consider the stage of the proceedings including whether discovery is complete and a trial date has
`
`been set. Id. Second, the Court will consider whether a stay will simplify the issues in question
`
`and trial of the case. Id. Third, the Court will consider whether a stay would unduly prejudice or
`
`present a clear tactical disadvantage to the nonmoving party. Id; see also Digital Ally, Inc. v. Taser
`
`Int’l, Inc., No. 16-cv-2032-CM-TJJ, 2017 WL 1048351, at *2 (D. Kan. March 20, 2017). The
`
`Court may lift a stay if the circumstances that persuaded the Court to impose the stay have changed
`
`
`LOGANTREE’S UNOPPOSED MOTION TO LIFT STAY OF LITIGATION PENDING INTER PARTES REVIEW
`
`
`2
`
`

`

`Case 6:17-cv-01217-EFM-ADM Document 39 Filed 09/11/19 Page 3 of 6
`
`significantly. Personal Audio, 230 F. Supp. 3d at 626. Moreover, the purpose of the stay is fulfilled
`
`when the PTAB has given its final written decisions because it has analyzed the evidence and
`
`articulated its decisions. Id.
`
`IV. ANALYSIS
`
`4.
`
`The Court issued the current stay upon finding that the three factors weighed in
`
`favor of issuing the stay. The Court’s order stated that the stay would be until the PTAB issues its
`
`decision on the IPRs. Because the PTAB issued its decision on the IPRs, the purpose of the stay
`
`has been met. Moreover, the circumstances that persuaded the Court to find that the three factors
`
`weighed in favor of the stay have changed significantly and now weigh in favor of lifting the stay.
`
`Therefore, the Court should grant this Motion to Lift Stay.
`
`A. The Purpose of the Stay Has Been Met
`
`5.
`
`The purpose of the stay in this case was to allow the PTAB to render its decision
`
`on the IPRs before this case proceeded any further. Because the PTAB rendered its decision and
`
`the underlying case has not proceeded any further, the purpose of the stay has been fully met.
`
`Because the Court stated that the stay would continue “until the PTAB issues its decision,” the
`
`Court should grant this Motion lifting the stay. See Mem. & Order, at 6 (Feb. 13, 2019).
`
`B. The Factors Weigh in Favor of Lifting the Stay
`
`6.
`
`First, the proceedings have been ongoing for over two years and should not be
`
`delayed any further. Although the parties have not conducted much discovery, the case has been
`
`ongoing and has already been delayed by the filing and hearing of the IPRs. With the PTAB’s
`
`decision, the continuation of the stay will not accomplish anything other than delay the case longer
`
`than it needs to be. See Chrimar Sys., Inc. v. Adtran, Inc., No. 6:15-cv-618-JRG-JDL, 2016 WL
`
`4080802, at *2 (E.D. Tex. Aug. 1, 2016) (finding that plaintiffs are unduly prejudiced when they
`
`
`LOGANTREE’S UNOPPOSED MOTION TO LIFT STAY OF LITIGATION PENDING INTER PARTES REVIEW
`
`
`3
`
`

`

`Case 6:17-cv-01217-EFM-ADM Document 39 Filed 09/11/19 Page 4 of 6
`
`cannot enforce their interest of a timely and cost effective enforcement of their patent rights). At
`
`some point, Garmin and LoganTree will have to complete discovery making it a waste of judicial
`
`resources to continue the stay further. See Milwaukee Elec. Tool Corp. v. Hilti, Inc., No. 14-CV-
`
`1288-JPS, 2016 WL 7495808, at *2 (E.D. Wis. Dec. 30, 2016). Therefore, this factor weighs in
`
`favor of lifting the stay because further delay would hinder LoganTree’s interest in a cost effective
`
`and timely enforcement of its patent rights. Chrimar Sys., 2016 WL 4080802, at *2.
`
`7.
`
`Second, the stay will not add any further simplification or insight into the
`
`underlying patent claims. When the PTAB issues its written findings, they determined the validity
`
`of the underlying patent claims. See Milwaukee Elec., 2016 WL 7495808, at *2; Ex. A and B.
`
`Unlike earlier stages of the proceeding where the PTAB could have invalidated the patent claims,
`
`the PTAB’s decision validated the claims, and further simplification is unlikely and weighs against
`
`maintaining the stay. Id.; Elm 3DS Innovations, LLC v. Samsung Elecs. Co., No. 14-1430-LPS-
`
`CJB, 2018 WL 1061370, at *2 (D. Del. Feb. 26, 2018); Personal Audio, 230 F. Supp. 3d at 626–
`
`27; Smart Modular Techs., Inc. v. Netlist, Inc., No. 2:12-cv-02319-TLN-EFB, 2016 WL 5159524,
`
`*3 (E.D. Cal. Sep. 21, 2016). The Court now has the expert guidance of the PTAB and can use
`
`that guidance in governing this case. See Milwaukee Elec., 2016 WL 7495808, at *2; Smart
`
`Modular, 2016 WL 5159524, at *3. Therefore, the second factor weighs heavily in favor of lifting
`
`the stay.
`
`8.
`
`Third, the stay would unduly prejudice LoganTree in waiting further to get its valid
`
`patent claims resolved. Even though LoganTree and Garmin are not competitors, furthering the
`
`stay would unduly prejudice LoganTree by needlessly dragging the case along even after the
`
`PTAB’s decisions favored LoganTree. See Elm 3DS, 2018 WL 1061370, at *2 (holding that
`
`continuing the stay would further prejudice the plaintiff even though the parties were not
`
`
`LOGANTREE’S UNOPPOSED MOTION TO LIFT STAY OF LITIGATION PENDING INTER PARTES REVIEW
`
`
`4
`
`

`

`Case 6:17-cv-01217-EFM-ADM Document 39 Filed 09/11/19 Page 5 of 6
`
`competitors). Keeping this litigation at this early stage would also give a tactical advantage to
`
`Garmin by causing further delays to the adjudication of the claims. See Zoll Med. Corp. v.
`
`Respironics, Inc., C.A. No. 12-1778-LPS, 2015 WL 4126741, at *1 (D. Del. July 8, 2015). Because
`
`the PTAB established the validity of the patent claims, continuing the stay would only cause undue
`
`prejudice to LoganTree and give a tactical advantage to Garmin. Therefore, this factor also weighs
`
`in favor of lifting the stay.
`
`V.
`
`REQUEST FOR RELIEF
`
`9.
`
`Because the PTAB found all patent claims to be valid, further delay in this case is
`
`unwarranted. For all of the foregoing reasons, LoganTree requests that the Court grant this Motion
`
`to Lift Stay and enter an order granting such other and further relief, at law or in equity, to which
`
`it may show itself entitled.
`
`10.
`
`Plaintiff has conferred with Defendants regarding the filing of this motion, and
`
`Defendants confirmed they have no objection.
`
`
`
`
`
`
`
`
`Respectfully submitted by:
`
`
`
`
`
`
`/s/Clayton J. Kaiser
`Clayton J. Kaiser, #24066
`
`Foulston Siefkin LLP
`1551 N. Waterfront Pkwy, Suite 100
`Wichita, Kansas 67206
`(316) 291-9539
`(866) 280-2532 FAX
`Email: ckaiser@foulston.com
`
`and
`
`
`
`/s/James E. Sherry
`Arnold Shokouhi, TX (pro hac vice)
`James E. Sherry, TX (pro hac vice)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`LOGANTREE’S UNOPPOSED MOTION TO LIFT STAY OF LITIGATION PENDING INTER PARTES REVIEW
`
`
`5
`
`

`

`Case 6:17-cv-01217-EFM-ADM Document 39 Filed 09/11/19 Page 6 of 6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`McCathern, PLLC
`3710 Rawlins Street, Suite 1600
`Dallas, TX 75219
`(214) 443-4478
`(214) 741-4717 FAX
`Email: arnolds@mccathernlaw.com
`Email: jsherry@mccathernlaw.com
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on September 11, 2019, 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.
`
`
`
`
`/s/Clayton J. Kaiser
`Clayton J. Kaiser, #24066
`1551 N. Waterfront Parkway, Suite 100
`Wichita, KS 67206-4466
`
`
`
`
`
`
`LOGANTREE’S UNOPPOSED MOTION TO LIFT STAY OF LITIGATION PENDING INTER PARTES REVIEW
`
`
`6
`
`