Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 1 of 40
`
`Scott G. Seidman, OSB No. 833209
`Direct Dial: (503) 802-2021
`Direct Fax: (503) 972-3721
`Email: scott.seidman@tonkon.com
`Jon P. Stride, OSB No. 903887
`Direct Dial: (503) 802-2034
`Email: jon.stride@tonkon.com
`Eric C. Beach, OSB No. 105783
`Direct Dial: (503) 802-2182
`Email: eric.beach@tonkon.com
`TONKON TORP LLP
`888 SW Fifth Avenue, Suite 1600
`Portland, OR 97204
`
`B. Trent Webb (admitted pro hac vice)
`Aaron Hankel (admitted pro hac vice)
`Ryan Schletzbaum (admitted pro hac vice)
`Lauren Douville (admitted pro hac vice)
`Colman McCarthy (admitted pro hac vice)
`Beth Larigan (admitted pro hac vice)
`Telephone: (816) 474-6550
`Fax: (816) 421-5547
`SHOOK, HARDY & BACON L.L.P.
`2555 Grand Boulevard
`Kansas City, Missouri 64108-2613
`
`Attorneys for Plaintiffs
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF OREGON
`
`PORTLAND DIVISION
`
`
`GARMIN SWITZERLAND GMBH, a
`Swiss Limited Liability Company, and
`GARMIN CORPORATION, a Taiwan
`Corporation,
`
`
`Plaintiffs,
`
`v.
`
`
`FLIR SYSTEMS, INC., an Oregon
`Corporation, and FLIR MARITIME US,
`INC. (F/K/A RAYMARINE, INC.), a
`Delaware Corporation,
`
`
`Defendants.
`
`
`
`
`
`
`
`
`
`
`Case No. 3:17-cv-01147-SB
`
`
`
`PLAINTIFFS' OPPOSITION TO
`DEFENDANTS' MOTION TO DISMISS
`
`
`
`
`
`
`
`EXHIBIT 1031.001
`
`

`

`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 2 of 40
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...............................................................................................................1
`
`STATEMENT OF FACTS ..................................................................................................4
`
`A.
`
`B.
`
`Plaintiff Garmin .......................................................................................................4
`
`U.S. Patent No. 7,268,703—Garmin’s “Auto Guidance” Patent.............................4
`
`1.
`
`2.
`
`3.
`
`4.
`
`Problems in the Art ......................................................................................4
`
`Inventions Disclosed and Claimed in the ‘703 Patent .................................5
`
`Claims of The ‘703 Patent ...........................................................................7
`
`The ‘703 Patent Specifies the Steps of the Improved Marine Route
`Calculation Algorithm .................................................................................8
`
`C.
`
`U.S. Patent No. 6,459,987—Garmin’s “TracBack®” Patent ..................................9
`
`1.
`
`2.
`
`3.
`
`Problems in the Art ......................................................................................9
`
`Inventions Disclosed and Claimed in the ‘987 Patent ...............................11
`
`Claims of The ‘987 Patent .........................................................................12
`
`III.
`
`GARMIN’S INVENTIONS ARE PATENT ELIGIBLE ..................................................13
`
`A.
`
`Legal Standards ......................................................................................................13
`
`1.
`
`2.
`
`Defendants Bear the Heavy Burden of Proving Invalidity Under §
`101 By Clear and Convincing Evidence ....................................................13
`
`Courts Apply A Two-Step Test In Assessing Patent Eligibility ................13
`
`B.
`
`The ‘703 Patent Is Patent Eligible Because the Claims Are Not “Abstract”
`As The Claims Cover A Tangible Inventive Solution To Known Problem
`In The Art ...............................................................................................................15
`
`1.
`
`The ‘703 Patent Claims Improve Upon Existing Computer-Aided
`Navigation Devices By Replacing Subjectivity With Objective,
`Rules-Based Algorithms To Achieve The Specific Result of
`Routing Through “Non-User Selected” Points ..........................................15
`
`PAGE i – TABLE OF CONTENTS
`
`EXHIBIT 1031.002
`
`

`

`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 3 of 40
`
`2.
`
`The ‘703 Patent Claims Are Also “Inventive,” As They Are
`Tailored To A Specific Solution That Does Not Preempt Entire
`Fields Of Technological Innovation ..........................................................22
`
`C.
`
`The ‘987 Patent Is Patent Eligible Because the Claims Are Limited To A
`Specific, Concrete Solution To A Particular Problem Associated With
`Prior Specialized GPS Systems .............................................................................25
`
`1.
`
`2.
`
`Claim 11 of the ‘987 Patent Solves A Very Specific Problem In A
`Very Specific Way and, As Such, Is Not “Abstract” .................................25
`
`The Asserted Claims Contain an Inventive Concept .................................28
`
`IV. ADDITIONAL REASONS WARRANT DENYING DEFENDANTS’ MOTION .........29
`
`A.
`
`B.
`
`Defendants Concerns About The Garmin Patents Can and Should Be
`Resolved On The Merits Through A Formal Claim Construction Process,
`Not On The Pleadings Based On Defendants’ Litigation-Inspired Factual
`Positions. ................................................................................................................30
`
`Defendants Only Discuss A Few Claims Rendering Their Motion
`Improper .................................................................................................................32
`
`CONCLUSION ..................................................................................................................33
`
`V.
`
`
`
`PAGE ii – TABLE OF CONTENTS
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`EXHIBIT 1031.003
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`

`

`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 4 of 40
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Accenture Global Servs. v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013)....................................................................................13, 15, 29
`
`Alice Corp. Pty Ltd. v. CLS Bank Int’l,
`134 S.Ct. 2347 (2014) ...................................................................................................... passim
`
`Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
`841 F.3d 1288 (Fed. Cir. 2016)..................................................................................2, 3, 23, 26
`
`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016)..................................................................................................2
`
`ART+COM Innovationpool GmbH v. Google Inc.,
`183 F. Supp. 3d 552 (D. Del. 2016) .........................................................................................24
`
`Bancorp Servs. v. Sun Life Assurance Co. of Canada,
`687 F.3d 1266 (Fed. Cir. 2013)................................................................................................29
`
`Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed. Cir. 2016)........................................................................................ passim
`
`Cal. Inst. of Tech. v. Hughes Commc’ns Inc.,
`59 F.Supp.3d 974 (C.D. Cal. 2014) .........................................................................................17
`
`Capstan AG Sys., Inc. v. Raven Indus., Inc.,
`No. 16-cv-04132, 2017 WL 106839 (D. Kan. Jan. 11, 2017) .....................................13, 22, 23
`
`Card Verification Sols. LLC v. Citigroup Inc.,
`No. 13-cv-6339, 2014 WL 492254 (N.D. Ill. Sept. 29, 2014) .................................................13
`
`Cave Consulting Grp., Inc. v. Truven Health Analytics Inc.,
`No. 15-cv-02177, 2016 WL 283478 (N.D. Cal. Jan. 25, 2016) ...............................................32
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014)................................................................................................22
`
`Eagle View Techs., Inc. v. Xactware Solultions, Inc.,
`No. 1-15-cv-07025, 2016 WL 4154136 (D.N.J. Aug. 2, 2016) ...............................................32
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)........................................................................................ passim
`
`PAGE iii – TABLE OF AUTHORITIES
`
`EXHIBIT 1031.004
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`

`

`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 5 of 40
`
`Fitbit Inc. v. AliphCom,
`No. 16-cv-00118, 2017 WL 819235 (N.D. Cal. 2017) ............................................................17
`
`InfoGation Corp. v. ZTE Corp.,
`No.16-1901, 2017 WL 1135638 (S.D. Cal. Mar. 27, 2017) ..................................17, 18, 19, 25
`
`InVue Sec. Prods. Inc. v. Mobile Tech., Inc.,
`No. 15-cv-00610, 2016 WL 1465263 (W.D.N.C. April 14, 2016) ..........................................32
`
`JSDQ Mesh Techs. LLC v. Fluidmesh Networks, LLC,
`No. 16-CV-212-GMS, 2016 WL 4639140 (D. Del. Sept. 6, 2016) .........................................32
`
`KHN Solutions, Inc. v. Vertisense, Inc.,
`No. 16-cv-962, 2016 WL 5725013 (N.D. Cal. Sept. 30, 2016) ...............................................32
`
`Klaustech, Inc. v. Admob, Inc.,
`No. 10-cv-05899, 2015 WL 10791915 (N.D. Cal. Aug. 31, 2015) .........................................13
`
`Liquid Dynamics Corp. v. Vaughn Co., Inc.,
`355 F.3d 1361 (Fed. Cir. 2004)................................................................................................32
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`566 U.S. 66 (2012) .....................................................................................................................1
`
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016)........................................................................................ passim
`
`Minelab Electronics Pty. Ltd. v. XP Metal Detectors,
`No. 16-cv-15942017 ................................................................................................................15
`
`Orbcomm Inc. v. Calamp Corp.,
`215 F. Supp. 3d 499 (E.D. Va. 2016) ......................................................................................26
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987)................................................................................................13
`
`Prisua Eng’g Corp. v. Samsung Electronics Co., Ltd.,
`No. 16-cv-21761, 2017 WL 1041571 (S.D. Fla. Mar. 9, 2017) ..............................................16
`
`SiRF Tech., Inc. v. Int’l Trade Com’n,
`601 F.3d 1319 (Fed. Cir. 2010)....................................................................................22, 26, 31
`
`StoneEagle Servs., Inc. v. Pay-Plus Sols., Inc.,
`No. 13-cv-2240, 2015 WL 518852 (M.D. Fla. Feb. 9, 2015) ..................................................32
`
`Thales Visionix Inc. v. US,
`850 F.3d 1343 (2017) ....................................................................................................... passim
`
`PAGE iv – TABLE OF AUTHORITIES
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`EXHIBIT 1031.005
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`

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`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 6 of 40
`
`Tranxition, Inc. v. Lenovo (U.S.) Inc.,
`664 F. App’x 968 (Fed. Cir. 2016) ..........................................................................................13
`
`Tranxition, Inc. v. Lenovo (U.S.) Inc.,
`No. 12-cv-01065, 2015 WL 4203469 (D. Or. July 9, 2015) ....................................................13
`
`Ultramercial, Inc. v. Hulu, LLC,
`722 F.3d 1335 (Fed. Cir. 2013) (vacated on other grounds)....................................................29
`
`Visual Memory LLC v. NVIDIA Corp.,
`No. 2016-2254, 2017 WL 3481288 (Fed. Cir. Aug. 15, 2017) ....................................... passim
`
`Statutes
`
`35 U.S.C. § 112 ........................................................................................................................19, 22
`
`35 U.S.C. § 282 ..............................................................................................................................13
`
`
`
`PAGE v – TABLE OF AUTHORITIES
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`EXHIBIT 1031.006
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`

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`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 7 of 40
`
`INDEX OF EXHIBITS
`
`
`PX 1, U.S. Patent No. 7,268,703
`
`PX 2, U.S. Patent No. 6,459,987
`
`PX 3, ‘703 Patent Notice of Allowability
`
`PX 4, ‘987 Patent Notice of Allowability
`
`PX 5, U.S. Patent No. 5,878,368 (excerpted)
`
`PX 6, U.S. Patent No. 5,559,707 (excerpted)
`
`PX 7, U.S. Patent No. 6,055,478 (excerpted)
`
`PX 8, Marcus Jenkins, NAVTEQ: Introduction to Route Calculation (2007)
`
`PX 9, Inchul Yang et al., Development of Realistic Driving Route Calculation Algorithm
`Considering Lane-Changing Time (excerpted)
`
`PX 10, U.S. Patent No. 6,192,314 (excerpted)
`
`PX 11, U.S. Patent No. 6,789,012 (excerpted)
`
`PX 12, June 2017 Email between Garmin and Defendants’ Counsel
`
`PX 13, Declaration of William Michalson, Ph.D.
`
`PX 14, Defendants Request For Inter Partes Review (excerpted)
`
`
`
`
`
`
`PAGE vi – INDEX OF EXHIBITS
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`EXHIBIT 1031.007
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`

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`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 8 of 40
`
`I.
`
`INTRODUCTION
`This is a patent case between two competitors in the marine navigation industry. In their
`
`motion to dismiss, Defendants attack Garmin’s patents with artificially high-level abstractions of
`
`the patented technologies. Indeed, Defendants characterize Garmin’s Auto Guidance® and
`TracBack® patents1 as being directed to the “abstract” concepts of “using a computer” to plan
`“safe routes” and “label points” during navigation. Dkt. 40 at 1, 4. With these and other
`
`mischaracterizations, Defendants contend that Garmin’s patents as being “too abstract to be
`
`patentable.” Id. at 2.
`
`Defendants are wrong. And the Court should decline Defendants' invitation to err by
`invalidating Garmin’s patents simply because they involve computers and computer-related
`
`technologies. But, as the Federal Circuit has repeatedly held, the relevant inquiry in assessing
`patent eligibility first asks “whether the claims at issue are directed to a patent-ineligible
`
`concept.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (quoting Alice
`
`Corp. Pty Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014)). And, contrary to Defendants’
`suggestion, “[t]he ‘directed to’ inquiry … cannot simply ask whether the claims involve a patent-
`
`ineligible concept, because essentially every routinely patent-eligible claim involving physical
`products and actions involves a law of nature and/or natural phenomenon—after all, they take
`
`place in the physical world.” Enfish, 822 F.3d 1335 (emphasis in original). This is because the
`
`law recognizes that “all inventions at some level embody, use, reflect, rest upon, or apply ...
`
`abstract ideas.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012).
`
`For these reasons, the Federal Circuit has repeatedly drawn a crisp and critical distinction
`
`between “involving” the abstract and being “directed to” the abstract, particularly in the context
`
`of computers and computer-related inventions. For example, in Enfish, the Federal Circuit held
`
`that computer-related patents are patent-eligible where, as here, the claims are drawn to specific
`
`and meaningful improvements over the preexisting systems known in the relevant arts. Enfish,
`
`
`1 See PX 1, U.S. Patent No. 7,268,703 (“the ‘703 Patent”), PX 2, U.S. Patent No. 6,459,987 (“the ‘987 Patent”).
`
`PAGE 1 – PLAINTIFFS' OPPOSITION TO DEFENDANTS' MOTION TO DISMISS
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`EXHIBIT 1031.008
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`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 9 of 40
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`822 F.3d 1335-1336. In contrast, claims are patent-ineligible if they merely use computers as “a
`
`tool” to preempt entire fields of existing “economic” and “business” activities. Id. Put simply,
`
`the law draws a deep divide between an improvement to a computer system (e.g., computer-
`
`assisted, GPS navigation), and patents that only take what was known and say “do it on a
`computer.” See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1243 (Fed. Cir. 2016).2
`Likewise, in September 2016, the Federal Circuit again rejected Defendants’ suggestion
`
`that any “use of a computer as a tool to automate conventional activity” renders a patent invalid
`
`per se. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016)
`
`(reversing invalidity under § 101). This is particularly true where, as here, the computer “is
`
`employed to perform a distinct process to automate a task previously performed by humans,”
`
`such that the “automation is realized by improving the prior art through the use of rules, rather
`than artis[ans].” Id. at 1313, 1315 (quotations omitted).3
`In November 2016, the Federal Circuit once again explained that claims are eligible if
`
`they “are directed to an improvement in computer functionality,” or otherwise “solve a
`
`technology-based problem, even with conventional, generic components, combined in an
`
`unconventional manner.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300
`
`(Fed. Cir. 2016) (reversing invalidity).
`
`And in March of this year, the Federal Circuit reiterated that at this step of the analysis “it
`
`is not enough to merely identify a patent-ineligible concept underlying the claim; we must
`
`determine whether that patent-ineligible concept is what the claim is ‘directed to.’” Thales
`
`2 Expanding on this critical distinction, the Enfish court distinguished patentable improvements against a slew of
`cases dealing with patent-ineligible ideas—e.g., cases where the idea was to simply use an off-the-shelf computer to
`perform longstanding economic and business tasks such as “risk hedging,” “intermediated settlement,” “determining
`a price,” “loan shopping,” “financial budgeting,” “price optimization,” and others. Enfish, 822 F.3d at 1335, 1338.
`3 The McRO court also explained: “It is the incorporation of the claimed rules, not the use of the computer, that
`‘improved [the] existing technological process’ by allowing the automation of further tasks. ... This is unlike Flook,
`Bilski, and Alice, where the claimed computer-automated process and the prior method were carried out in the same
`way.” McRO, 837 F.3d at 1314-15. The claims here, of course, distinguish themselves from the prior art. See PX
`3, ‘703 Notice of Allowability at 2 (claims allowable over the prior art that failed to teach marine routing that is
`performed “to avoid preselected conditions by identifying one or more non-user selected waypoints”); PX 4, ‘987
`Patent Notice of Allowability at 2 (“the claims are found to be patentable over the prior art”).
`
`PAGE 2 – PLAINTIFFS' OPPOSITION TO DEFENDANTS' MOTION TO DISMISS
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`EXHIBIT 1031.009
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`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 10 of 40
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`Visionix Inc. v. US, 850 F.3d 1343, 1349 (2017). In Thales, the Federal Circuit addressed the
`
`eligibility of a method claim that used algorithms to determine position information from inertial
`
`sensors. Id. at 1345-1346. Finding that the invention “provide[s] a method that eliminates many
`
`‘complications’ inherent in previous solutions for determining position and orientation of an
`
`object on a moving platform” through its “unconventional utilization of inertial sensors,” the
`
`Federal Circuit reversed the finding of invalidity where, as here, the patent set forth “a new and
`
`useful technique for using sensors to more efficiently track an object on a moving platform.” Id.
`
`at 1348-1349. In rejecting the entire premise of Defendants’ motion, the Thales court explained
`that the use of “a mathematical equation ... does not doom the claims to abstraction.” Id.
`
`(emphasis added). For whatever reason, Defendants do not even discuss the Thales decision, let
`
`alone distinguish it.
`
`And, as recently as last month, the Federal Circuit again echoed the significant division
`
`between “involving” and “directed to” in the context of computer and computer-related
`
`inventions. See Visual Memory LLC v. NVIDIA Corp., No. 2016-2254, 2017 WL 3481288, at *6
`
`(Fed. Cir. Aug. 15, 2017). Rejecting the argument that the claims were nothing more than a
`
`result-oriented “black box” that lacked “any detail[s] about how [the invention] is achieved, id. at
`
`*5, the court found that the claims at-issue “directed to a technological improvement,” not an
`
`abstract idea. Id. at *3-*5 (citing Enfish, 822 F.3d at 1335-36).
`
`In this case, Garmin’s patented technologies were developed by real technologists and
`
`resolve real problems through specific innovations in the marine navigation industry. As such,
`
`Garmin's patents fall squarely under the controlling standard articulated in Enfish, and reiterated
`
`in McRO, Amdocs, Thales, Visual Memory, and other recent decisions. As explained below,
`Defendants’ challenge under § 101 should be denied with prejudice.4
`
`4 Defendants’ poisonous characterizations of the dismissal of the Kansas action, see Dkt. 40 at 2, are nothing more
`than smears designed to predispose the Court against Garmin. In the Kansas case, FLIR moved to dismiss the
`complaint for lack of patent eligible subject matter and improper venue in view of the Supreme Court’s pending
`decision in TC Heartland, which was issued on May 22, 2017. Based on the same, Garmin counsel reached out to
`Defendants’ within days to discuss its impact on the Kansas case. See PX 12, June 2017 Email at 1-2. The parties’
`
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`EXHIBIT 1031.010
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`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 11 of 40
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`II.
`
`STATEMENT OF FACTS
`Plaintiff Garmin
`A.
`Plaintiffs Garmin Switzerland GmbH and Garmin Corporation are part of the larger
`
`Garmin enterprise, which includes Garmin International (“Garmin”). Dkt. 1 ¶¶ 1-3. Garmin
`
`International was founded in 1989 in Lenexa, Kansas, and has since become the recognized
`
`leader in feature-rich and intuitive navigational products. Id. ¶¶ 37-40. The patents at-issue are
`
`the result of Garmin’s investments in the ideas of its technologists, which includes Garmin’s
`
`award-winning Auto Guidance and TracBack® inventions at-issue here. Id. ¶¶ 46-55.
`U.S. Patent No. 7,268,703—Garmin’s “Auto Guidance” Patent
`B.
`U.S. Patent No. 7,268,703 (“‘703 Patent”), entitled “Methods, Systems, and Devices for
`
`Cartographic Alerts,” was filed by inventors Darrin Kabel and Steven Myers. PX 1. The
`
`inventions generally relate to determining if a course includes conditions (“preselected
`
`conditions”) and, if it does, re-routing the course through “non-user selected waypoints” to avoid
`
`undesirable conditions on the re-routed course.
`Problems in the Art
`1.
`At the time the invention of the ‘703 Patent was filed in 2003, land-based navigation
`
`technologies were adept at plotting a route directly between two waypoints on a paved road.
`
`Dkt. 1 ¶ 47. But in the marine context where roads do not exist, this technology alone was
`
`insufficient to calculate an optimal path between two points, in part, because of the innumerable
`
`possible routes in the open water between two waypoints. Id. Similarly, topographical features
`
`such as shallow or narrow waters could present a hazard to some boats but not others. Id.
`
`As explained in the patent, existing navigational technologies—the most well-known
`
`being GPS—were incapable of addressing these issues because they relied on a user to analyze
`
`
`counsel conferred on June 7, wherein Garmin’s proposed a stipulated transfer to another venue (including the
`District of Oregon). Defendants counsel declined, preferring to wait for a ruling on the § 101 challenge.
`Far from seeking delay, Garmin dismissed and refiled the case to expedite a ruling on the merits since it was
`likely the court would decide Defendants’ motion on the narrowest grounds available—i.e., venue. To imply
`Garmin refiled out of fear of an adverse ruling is just wrong, if not disingenuous.
`
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`EXHIBIT 1031.011
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`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 12 of 40
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`inputs from multiple navigational aids, including users who may not fully appreciate which
`
`inputs were most useful or should be considered when charting a course. For instance, prior art
`
`electronic navigation systems relied on numerous input sources to provide information to the
`
`boater, such as, for example, information from “radios, radar systems, cameras, and sensors.”
`
`PX 1 at 1:14-17. Based on these sources, “[t]he boater c[ould] then use the information from
`
`these devices in planning and navigating a course for the boat.” Id. at 1:18-20. However, this
`
`often resulted in “quite a lot of information for the boater to consider in planning and navigating
`
`a course for the boat,” for example, “which courses might be preferable, or even available, for
`
`the size and type of boat being used.” Id. at 21-25. And, of course, by relying on the user to
`
`define the end-to-end route, the “user may inadvertently overlook one or more hazards in
`
`planning their course.” Id. at 1:25-26.
`Inventions Disclosed and Claimed in the ‘703 Patent
`2.
`The invention of the ‘703 Patent corrected these inherent shortcomings of then-existing
`
`navigational technologies. In particular, the invention of the ‘703 Patent includes applying a
`
`rules-based objective set of procedures to automatically analyze the boater’s desired course in
`
`view of previously identified conditions associated with the desired course, e.g., courses that
`
`avoid waters too shallow for the mariner’s boat. Id. at Abstract. For example, the specification
`
`describes inputting into the marine electronic device “a first location 410 [red] and a potential
`
`waypoint 414 [blue] that passes through land 416 [green].” Id. at 8:40-51; FIG. 4A. The
`
`electronic navigation device uses information about preselected conditions, e.g., water depth, to
`
`analyze the course (item “418”, below), identify conditions on the course (item “416”, below),
`
`and re-route the course through non-user selected waypoints to avoid the preselected condition
`
`(items “420”, below). In particular, “[r]ecalculating of course ... provides the recalculated course
`
`403 with one or more additional waypoints, shown as 420 [purple line]. The additional
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`waypoints 420 [purple dots] have been included to allow the course 403 to avoid the preselected
`conditions” and represent “non-user waypoints.” Id. at 8:60-65 (emphasis added).
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`EXHIBIT 1031.012
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`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 13 of 40
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`FIG. 4A
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`FIG. 4B
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`In addition to analyzing a potential course between a location and potential waypoint
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`using the invention’s rules-based criteria, the ‘703 Patent discloses and describes a multitude of
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`other marine route calculation processes to calculate navigable routes based on preselected
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`conditions. For example, in the embodiment shown and described in FIG. 4D, predetermined
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`geometric areas around the craft (including, potentially, along the heading or course of travel) are
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`analyzed for preselected conditions [orange]. Alternatively, the marine electronic navigation
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`device can analyze a filter area graphically indicated by the user for preselected conditions
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`[gray], as illustrated below from FIG. 4E:
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`FIG. 4D
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`FIG. 4E
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`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 14 of 40
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`The specification is further replete with detailed descriptions and explanations enabling a
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`skilled artisan in the computer-aided (i.e., GPS) navigational arts to make and use the claimed
`inventions based on their specialized training in the arts.5 Id. at 10:56-12:3.
`Claims of The ‘703 Patent
`3.
`In its Complaint, Garmin asserts that Defendants infringe at least claims 19 and 20 of the
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`‘703 Patent. Dkt. 1 at 70-114. Claim 20 recites:
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`PX 1 at 14:22-40.
`As shown, claim 20 is directed to an improved “electronic marine navigation device,”
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`which the specification describes as “a device specially equipped to receive GPS data [by]
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`scanning radar frequencies for GPS satellite signals.” PX 1 at 2:8-10, FIG. 2. Claim 20 includes
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`a limitation directed at a “processor,” a known structure in the arts. Id. at FIG. 3. Claim 20
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`references “a user interface operatively coupled to the processor,” which is illustrated and
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`5 Indeed, a number of intrinsic materials cited during prosecution confirm the skilled artisan would understand and
`appreciate the phrase “marine route calculation algorithm.” See PX 5, U.S. Patent No. 5,878,368, at 1:20-23 (“The
`navigation system determines a route ... utilizing an algorithm....”); PX 6, U.S. Patent No. 5,559,707, at 8:20-24
`(“The routing algorithm ... determines the shortest route, quickest route, or user defined preferred route....”); PX 7,
`U.S. Patent No. 6,055,478, at 6:15-21 (“system controller 30 will generate a route to the desired destination, using ...
`route generating algorithms in system controller 30”). Likewise, a number of other materials the language of the
`claims and patent specification is common parlance within the art of computer-assisted navigation. See PX 8,
`Jenkins, at 5 (discussing, inter alia, the “‘classic’ route calculation algorithm as described by the late, great Edsger
`Dijkstra in 1959”), 6-7 (discussing “route calculation algorithms”); PX 9, Yang et al., at 6 (same); PX 10, U.S.
`Patent No. 6,192,314, at Abstract, 19:36-60 (“Any known method or algorithm 170 may be used... For example, the
`method used may be the A* algorithm or the Dykstra algorithm.”); PX 11, U.S. Patent No. 6,789,012, at 16:46-49
`(“[R]oute calculation algorithms....”); see also PX 13, Michalson Decl. at ¶¶ 57-69.
`For these reasons, Defendants’ complaint—that “the ‘marine route calculation algorithm’ [is] a single discrete
`step, without any elaboration as to how such an algorithm might in fact be performed”—rings hollow. Dkt. 40 at 8.
`Indeed, this complaint is belied by the express claim text, which sets forth multiple aspects of the claimed marine
`route calculation algorithm (including course and cartographic analysis, identification of preselected conditions, and
`routing an alternative route through “non-user selected waypoints”), all of which is described in great detail in the
`specification. See, e.g., § II.II.B.3-4, infra. Thus, skilled artisans would readily appreciate the phrase “marine route
`calculation algorithm” based on the claims, the teachings in the specification, and their knowledge of the art.
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`Case 3:17-cv-01147-SB Document 45 Filed 09/15/17 Page 15 of 40
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`described in connection with FIGS. 4A-4E. Id. at 8:20-24; FIGS. 4A-4E. Claim 20 also
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`references “a location input operatively coupled to the processor” to receive location data. The
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`specification describes this feature of the claim as the “input devices 216 shown in FIG. 2A,”
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`which may include “a multiposition (e.g., 3-axis) data entry button 220,” “a microphone for
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`receiving voice commands,” a “touch sensitive screen,” etc. Id. at 3:32-35, 4:14-23. Claim 20
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`further includes a memory, which the specification explains is a structure that “can retrievably
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`store a marine route calculation algorithm,” as well as “retrievably store cartographic data,
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`including marine craft data and a variety of preselected conditions that are also used in
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`conjunction with the marine route calculation algorithm.” Id. at 4:27-33.
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`Notably, claim 20 includes additional requirements regarding the claimed routing
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`process, which includes: (1) analyzing cartographic data including data related to the preselected
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`conditions (e.g., acceptable water depth); (2) analyzing a course between a first location and a
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`potential waypoint in view of the preselected conditions; and (3) re-routing the course to avoid
`preselected conditions through one or more non-user selected waypoints.6 The other
`independent claims of the ‘703 Patent recite these same algorithmic steps. See id. at 13:58-64
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`(claim 12), 13:5-11 (claim 1), 15:6-11 (claim 27), 15:16-20 (claim 28).
`4.
`The ‘703 Patent Specifies the Steps of the Improved Marine Route
`Calculation Algorithm
`In their motion, Defendants argue that ‘703 Patent “treats the ‘marine route calculation
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`a