Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 1 of 36
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
`
`Garmin Switzerland GmbH; and
`Garmin Corporation,
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`FLIR Maritime US, Inc.,
`
`
`Defendant.
`
`Case No. 2:16-cv-2806-JWL-JPO
`
`GARMIN’S OPPOSITION TO
`DEFENDANT’S MOTION TO DISMISS THE COMPLAINT
`
`Plaintiffs Garmin Switzerland GmbH and Garmin Corporation hereby respond in
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`opposition to FLIR Maritime US, Inc.’s Motion to Dismiss. Dkt. 9, 10.
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`
`
`
`
`FLIR-1022.001
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`

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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 2 of 36
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`TABLE OF CONTENTS
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`III.
`IV.
`A.
`B.
`
`TABLE OF CONTENTS ........................................................................................................ II
`TABLE OF AUTHORITIES ................................................................................................. III
`INDEX OF EXHIBITS ........................................................................................................... V
`I.
`STATEMENT OF THE NATURE OF THE MATTER .........................................1
`II.
`STATEMENT OF FACTS ......................................................................................3
`Plaintiff Garmin .......................................................................................... 3
`A.
`U.S. Patent No. 7,268,703—Garmin’s “Auto Guidance” Patent................ 3
`B.
`U.S. Patent No. 6,459,987—Garmin’s “TracBack®” Patent ..................... 9
`C.
`QUESTIONS PRESENTED ..................................................................................13
`GARMIN’S INVENTIONS ARE PATENT ELIGIBLE ......................................13
`Legal Standards ......................................................................................................13
`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
`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 ......................................................................................22
`ADDITIONAL REASONS WARRANT DENYING DEFENDANT’S
`MOTION................................................................................................................27
`VENUE WAS AND IS PROPER ..........................................................................29
`VI.
`VII. CONCLUSION ......................................................................................................30
`
`C.
`
`V.
`
`
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page ii)
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`FLIR-1022.002
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 3 of 36
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`TABLE OF AUTHORITIES
`
`Cases
`
`Accenture Global Servs. v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013)..................................................................................... 13, 15, 27
`Alice Corp. Pty. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ............................................................................................ 14, 15, 26, 27
`Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
`841 F.3d 1288 (Fed. Cir. 2016)................................................................................. 2, 20, 21, 23
`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016)............................................................................................. 1, 16
`ART+COM Innovationpool GmbH v. Google Inc.,
`183 F. Supp. 3d 552 (D. Del. 2016) .......................................................................................... 22
`Bancorp Servs. v. Sun Life Assurance Co. of Canada,
`687 F.3d 1266 (Fed. Cir. 2013)................................................................................................. 27
`Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed. Cir. 2016)............................................................................... 15, 20, 23, 26
`Capstan AG Sys., Inc. v. Raven Indus., Inc.,
`No. 16-cv-04132, 2017 WL 106839 (D. Kan. Jan. 11, 2017) ............................................ 13, 20
`Card Verification Sols. LLC v. Citigroup Inc.,
`No. 13-cv-6339, 2014 WL 492254 (N.D. Ill. Sept. 29, 2014) .................................................. 13
`Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
`776 F.3d 1343 (Fed. Cir. 2014)................................................................................................. 29
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014)................................................................................................. 19
`Eagle View Techs., Inc. v. Xactware Solultions, Inc.,
`No. 1-15-cv-07025, 2016 WL 4154136 (D.N.J. Aug. 2, 2016) ................................................ 27
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016).......................................................................................... passim
`Equity Bank v. U.S. Bank Nat’l Ass’n,
`No. 12-cv-1311, 2012 WL 5587854 (D. Kan. Nov. 15, 2012) ................................................. 30
`F5 Networks, Inc. v. Radware, Inc.,
`No. 2:16-cv-00480, 2016 WL 6947414 (W.D. Wash. Nov. 14, 2016) ..................................... 30
`In re TC Heartland LLC,
`821 F.3d 1338 (Fed. Cir. 2016)................................................................................................. 29
`InVue Sec. Prods. Inc. v. Mobile Tech., Inc.,
`No. 15-cv-00610, 2016 WL 1465263 (W.D.N.C. April 14, 2016) ........................................... 27
`KHN Solutions, Inc. v. Vertisense, Inc.,
`No. 16-cv-962, 2016 WL 5725013 (N.D. Cal. Sept. 30, 2016) ................................................ 27
`Klaustech, Inc. v. Admob, Inc.,
`No. 10-cv-05899, 2015 WL 10791915 (N.D. Cal. Aug. 31, 2015) .......................................... 13
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016).......................................................................................... passim
`SiRF Tech., Inc. v. Int’l Trade Com'n,
`601 F.3d 1319 (Fed. Cir. 2010)..................................................................................... 20, 24, 28
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page iii)
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`FLIR-1022.003
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 4 of 36
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`Ultramercial, Inc. v. Hulu, LLC,
`722 F.3d 1335 (Fed. Cir. 2013)................................................................................................. 27
`VE Holding Corp. v. Johnson Gas Appliance Co.,
`917 F.2d 1574 (Fed. Cir. 1990)................................................................................................. 29
`
`Statutes
`
`28 U.S.C. § 1391(c) ...................................................................................................................... 29
`
`28 U.S.C. § 1400(b) ...................................................................................................................... 29
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`28 U.S.C. § 1406(a) ...................................................................................................................... 30
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page iv)
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`FLIR-1022.004
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 5 of 36
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`INDEX OF EXHIBITS
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`PX 1, U.S. Patent No. 7,268,703
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`PX 2, U.S. Patent No. 6,459,987
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`PX 3, '703 Patent Notice of Allowability
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`PX 4, '987 Patent Notice of Allowability
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`PX 5, U.S. Patent No. 5,878,368 (excerpted)
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`PX 6, U.S. Patent No. 5,559,707 (exerpted)
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`PX 7, U.S. Patent No. 6,055,478 (excerpted)
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`PX 8, Marcus Jenkins, NAVTEQ: Introduction to Route Calculation (2007)
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`PX 9, Inchul Yang et al., Development of Realistic Driving Route Calculation Algorithm
`Considering Lane-Changing Time (excerpted)
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`PX 10, U.S. Patent No. 6,192,314 (excerpted)
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`PX 11, U.S. Patent No. 6,789,012 (excerpted)
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page v)
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`FLIR-1022.005
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 6 of 36
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`I. STATEMENT OF THE NATURE OF THE MATTER
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`Just nine months ago, the Federal Circuit clarified the law of patent eligibility for computer-
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`related technologies. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). In this May
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`2016 decision, the court held that computer-related patents are patent-eligible where, as here, the
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`claims are drawn to specific and meaningful improvements over the preexisting systems known in
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`the relevant arts. Id. 1335-36. In contrast, claims are patent-ineligible if they merely use
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`computers as “a tool” to preempt entire fields of existing “economic” and “business” activities.
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`Id. In other words, patent law draws a sharp distinction between claims to an improvement to a
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`computer system (e.g., a system for computer-assisted (GPS) navigation), and those that merely
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`take what was known and say “do it on a computer.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
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`1243 (Fed. Cir. 2016).
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`Expanding on this critical distinction—one that Defendant fails to even address—the
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`Enfish court distinguished patentable improvements against a slew of cases dealing with patent-
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`ineligible ideas—e.g., cases where the idea was to simply use an off-the-shelf computer to perform
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`longstanding economic and business tasks such as “risk hedging” (Bilski), “intermediated
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`settlement” (Alice), “determining a price” (Versata), “loan shopping” (Mortgage Grader),
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`“financial budgeting” (Intellectual Ventures I), “price optimization” (OIP), and many others.1 See
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`id. at 1335, 1338.
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`Since May 2016, the Federal Circuit has revisited, reiterated, and reaffirmed the
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`significance of Enfish in assessing patent eligibility of improved computer-related inventions. In
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`September 2016, for example, the Federal Circuit squarely rejected Defendant’s suggestion that
`
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`1 Tellingly, Defendant focuses its brief on these and other inapplicable cases—choosing instead to ignore the Federal
`Circuit’s more recent and more relevant decisions. Dkt. 10 at 2 (Bilski), 3 (Alice, OIP), and 7 (Intellectual Ventures
`I). These cases, however, have no bearing on the inventions at-issue here—inventions that embody specific and
`meaningful improvements over existing computer-assisted marine navigation systems in the art.
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page 1 of 30)
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`FLIR-1022.006
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 7 of 36
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`any “use of a computer as a tool to automate conventional activity” renders a patent invalid per se.
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`McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016) (reversing
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`invalidity under § 101). This is particularly true where, as here, the computer “is employed to
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`perform a distinct process to automate a task previously performed by humans,” such that the
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`“automation is realized by improving the prior art through the use of rules, rather than artis[ans].”
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`Id. at 1313, 1315 (quotations omitted).2 Similarly, in November 2016, the Federal Circuit again
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`explained that claims are eligible if they “are directed to an improvement in computer
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`functionality,” or otherwise “solve a technology-based problem, even with conventional, generic
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`components, combined in an unconventional manner.” Amdocs (Israel) Ltd. v. Openet Telecom,
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`Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) (reversing invalidity).
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`Garmin’s patented technologies fall squarely under the controlling standard articulated in
`
`Enfish, and reiterated in McRO, Amdocs, and other recent decisions. As explained below,
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`Garmin’s inventions set forth real, tangible, and important solutions to specific problems that had
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`plagued the computer-assisted navigational arts (i.e., GPS) for years. It is therefore no surprise
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`Defendant failed to discuss, let alone distinguish, this authority.3 Defendant’s challenge under
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`§ 101 should be denied with prejudice.
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`Regarding venue, as of December 12, 2016, when this case was filed, it is not disputed that
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`venue is proper in this District applying existing law. Indeed, a corporate defendant such as FLIR
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`2 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”).
`3 Inexplicably, Defendant’s only mention of any of these more recent and controlling decisions can be found at Dkt.
`10 at 17 (“Cf. Enfish....”). Even here, Defendant acknowledges that the claims were “patentable because they were
`directed to ‘an improvement in the functioning of a computer.’” Id.
`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page 2 of 30)
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`FLIR-1022.007
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 8 of 36
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`is “deemed to reside in any judicial district in which it is subject to personal jurisdiction at the
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`time the action is commenced.” VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574,
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`1584 (Fed. Cir. 1990) (emphasis added); see also 28 U.S.C. § 1391(c). Thus, Defendant cannot
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`dispute the simple fact that it is subject to specific personal jurisdiction in this case, or that
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`Garmin’s choice of venue was appropriate under existing law. Because venue was proper “at the
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`time [this] action was commenced,” Defendant’s speculative motion should be denied.
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`II. STATEMENT OF FACTS
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`A. Plaintiff Garmin
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`Plaintiffs Garmin Switzerland GmbH and Garmin Corporation are part of the larger
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`Garmin enterprise, which includes Garmin International (“Garmin”). Dkt. 1 ¶¶ 1-3. Garmin
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`International was founded in 1989 in Lenexa, Kansas, and his since become the recognized leader
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`in feature-rich and intuitive navigational products. Id. ¶¶ 16-17. The patents at-issue are the result
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`of Garmin’s investments in the ideas of its technologists, which includes Garmin’s award-winning
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`Auto Guidance and TracBack®4 inventions at-issue here. Id. ¶¶ 23-32.
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`B. U.S. Patent No. 7,268,703—Garmin’s “Auto Guidance” Patent
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`U.S. Patent No. 7,268,703 (“‘703 Patent”), entitled “Methods, Systems, and Devices for
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`Cartographic Alerts,” was filed by inventors Darrin Kabel and Steven Myers. PX 1. As detailed
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`more below, the inventions generally relate to determining if a course includes conditions
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`(“preselected conditions”) and, if it does, re-routing the course through alternative route points
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`(“waypoints”) that are not provided by the user (“non-user selected waypoints”) to avoid
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`conditions on the re-routed course.
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`4 In a separate case filed against Navico in Kansas, No. 16-cv-2706, currently assigned to Judge Murguia and
`Magistrate Rushfelt, Garmin alleges Navico infringes these same patents, as well as its registered “TracBack®” mark.
`No. 16-cv-2706, Dkt. 1. Notably, Navico did not seek to dismiss the complaint under § 101. No. 16-cv-2706, Dkt.
`25. Nor did the other Defendant, C-MAP. No. 16-cv-2706, Dkt. 26.
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page 3 of 30)
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`FLIR-1022.008
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 9 of 36
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`1. Problems in the Art
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`At the time the invention of the ‘703 Patent was filed in 2003, land-based GPS technologies
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`were adept at plotting a route directly between two waypoints on a paved road. Dkt. 1 ¶ 24. But
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`in the marine context where roads do not exist, GPS technology alone was insufficient to calculate
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`an optimal path between two points, in part, because of the innumerable possible routes in the open
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`water between two waypoints. Id. Similarly, topographical features such as shallow or narrow
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`waters could present a hazard to some boats but not others. Id.
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`As explained in the patent, existing GPS technologies were incapable of addressing these
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`issues because they relied on a user to analyze inputs from multiple navigational aids, including
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`users who may not fully appreciate which inputs were most useful or should be considered when
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`charting a course. For instance, prior art electronic navigation systems relied on numerous input
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`sources to provide information to the boater, such as, for example, information from “radios, radar
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`systems, cameras, and sensors.” PX 1 at 1:14-17. Based on these sources, “[t]he boater c[ould]
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`then use the information from these devices in planning and navigating a course for the boat.” Id.
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`at 1:18-20. However, this often resulted in “quite a lot of information for the boater to consider in
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`planning and navigating a course for the boat,” for example, “which courses might be preferable,
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`or even available, for the size and type of boat being used.” Id. at 21-25. And, of course, by
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`relying on the user to define the end-to-end route, the “user may inadvertently overlook one or
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`more hazards in planning their course.” Id. at 1:25-26.
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`2. Inventions Disclosed and Claimed in the ‘703 Patent
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`The invention of the ‘703 Patent corrected these inherent shortcomings of then-existing
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`GPS marine technologies. In particular, the invention of the ‘703 Patent includes applying a rules-
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`based objective set of procedures to automatically analyze the boater’s desired course in view of
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`previously identified conditions associated with the desired course, e.g., courses that avoid waters
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page 4 of 30)
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`FLIR-1022.009
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 10 of 36
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`too shallow for the mariner’s boat. Id. at Abstract. For example, the specification describes
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`inputting into the marine electronic device “a first location 410 [red] and a potential waypoint 414
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`[blue] that passes through land 416 [green].” Id. at 8:40-51; FIG. 4A. The electronic navigation
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`device uses information about preselected conditions, e.g., minimum water depth, to analyze the
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`initial course (shown as numeral “418” in FIG. 4A, below), identify segments that include
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`conditions, and re-calculate the course through non-user selected waypoints to avoid the
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`preselected condition. As explained in the patent, and illustrated below in FIG. 4B,
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`“[r]ecalculating of course 403 relative to the original calculation of course 404 shown in FIG. 4A
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`provides the recalculated course 403 with one or more additional waypoints, shown as 420 [purple
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`line]. The additional waypoints 420 [purple dots] have been included to allow the course 403 to
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`avoid the preselected conditions.” Id. at 8:55-60. Critically, “[t]he waypoints 420, in the present
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`situation, are non-user waypoints. In other words, waypoints 420 were determined by the system,
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`and not the user.” Id. at 8:60-62 (emphasis added). Thus, preselected conditions are used to route
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`based on boat data (e.g., water depth, shown in green):
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page 5 of 30)
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`FLIR-1022.010
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 11 of 36
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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 using
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`
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`the invention’s rules-based criteria, the ‘703 Patent discloses and describes a multitude of other
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`marine route calculation processes to calculate navigable routes based on preselected conditions.
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`For example, in the embodiment shown and described in FIG. 4D, predetermined geometric areas
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`around the craft (including, potentially, along the heading or course of travel) are analyzed for
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`preselected conditions [orange]. Alternatively, the marine electronic navigation device can
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`analyze a filter area graphically indicated by the user for preselected conditions [gray], as
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`illustrated below from FIG. 4E:
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page 6 of 30)
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`FLIR-1022.011
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 12 of 36
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`FIG. 4D
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`FIG. 4E
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`The specification is further replete with detailed descriptions and explanations enabling a
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`
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`
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`skilled artisan in the computer-aided (i.e., GPS) navigational arts to make and use the claimed
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`inventions based on their specialized training in the arts.5 Id. at 10:56-12:3.
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`3. Claims of The ‘703 Patent
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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 (both patent and non-patent)
`demonstrate the language of the claims and patent specification is common parlance within the art of computer-
`assisted navigation. See PX 8, Jenkins, at 5 (“Route calculation is the software component in a navigation system that
`determines the best route” using, for example, 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 (“In this section we
`develop a driving route calculation algorithm....”); PX 10, U.S. Patent No. 6,192,314, at Abstract, 19:36-60 (“A
`program and method for route calculation for use with a navigation system.... Any known method or algorithm 170
`may be used for this purpose. 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 that find many potential routes before
`selecting the best-fit route, can also benefit.”).
`For these reasons, Defendant’s 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. 10 at 17.
`Indeed, the 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 § II.B.2. Thus, a person having ordinary skill in the art would readily appreciate and understand
`the phrase “marine route calculation algorithm” based on the text of the claims, the teachings in the specification, and
`their knowledge of the art.
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page 7 of 30)
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`FLIR-1022.012
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 13 of 36
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`In its Complaint, Garmin asserts that Defendant infringes at least claims 19 and 20 of the
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`‘703 Patent. Dkt. 1 at 14-30. Claim 20 recites:
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`
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`PX 1 at 14:22-40.
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`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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`described in connection with FIGS. 4A-4E. Id. at 8:20-24; FIGS. 4A-4E. Claim 20 also references
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`“a location input operatively coupled to the processor” to receive location data. The specification
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`describes this feature of the claim as the “input devices 216 shown in FIG. 2A,” which may include
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`“a multiposition (e.g., 3-axis) data entry button 220,” “a microphone for receiving voice
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`commands,” a “touch sensitive screen,” etc. Id. at 3:32-35, 4:14-23. Claim 20 further includes a
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`memory, which the specification explains is a structure that “can retrievably store a marine route
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`calculation algorithm,” as well as “retrievably store cartographic data, including marine craft data
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`(Page 8 of 30)
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`FLIR-1022.013
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`Case 2:16-cv-02806-JWL-JPO Document 24 Filed 02/08/17 Page 14 of 36
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`and a variety of preselected conditions that are also used in conjunction with the marine route
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`calculation algorithm.” Id. at 4:27-33.
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`Notably, claim 20 includes additional requirements regarding the claimed routing process,
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`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
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`preselected conditions through one or more non-user selected waypoints.6
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`C. U.S. Patent No. 6,459,987—Garmin’s “TracBack®” Patent
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`U.S. Patent No. 6,459,987 (“‘987 Patent”) entitled “Method and Apparatus for
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`Backtracking a Path,” was conceived by inventors Jay Dee Krull and Darin Beesley. See PX 2.
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`As generally described below, once a forward path has been traveled by the user, the inventions
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`generally relate to improved GPS technologies that create a historical path from the forward path
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`by intelligently minimizing the number of forward points to store on the historical path while
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`simultaneously ensuring the historical path generally matches the forward path.
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`1. Problems in the Art
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`At the time of the invention in 1996, specialized GPS systems were becoming popular and
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`common due to reductions in cost. PX 2 at 1:13-15. As these devices gained wider acceptance,
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`so too did their use among the consuming public. PX 2 at 1:15-20. This wider use revealed a
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`number of failures of then-existing GPS devices, as users encountered more and more potential
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`applications of GPS technologies. PX 2 at 1:15-20.
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`These additional applications exposed a number of problems with existing GPS systems,
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`6 Claim 19, which depends from claim 12, generally recites similar computer instructions operable in an electronic
`marine navigation environment and further specifies that the “preselected condition” includes an indication of an
`acceptable “water depth.”
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`including the lack of a system that could “provid[e] a return path which accurately takes into
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`consideration the entire path traveled by the user.” PX 2 at 1:46-48. In other words, existing GPS
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`devices were unable to provide accurate return paths “because of the memory and computational
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`limitations present in [then-existing] GPS systems.” PX 2 at 1:46-48. As explained in greater
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`detail in the specification:
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`For example, to accurately map a path, the number of data points would vary with
`the number of times the path meanders from a straight line. The data associated
`with a detour around an impassable object would greatly reduce the distance of a
`path one would be able to store in memory. Additionally, even if one would store
`every minute detail of a path, the user would not want to know about each minor
`change in path stored and replayed.
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`PX 2 at 1:50-58. In other words, saving user paths in a specialized GPS system consumed far too
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`much device memory and compromised route representation and route display speeds. This was
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`due, in part, to the fact that forward paths consisted of thousands—if not tens of thousands—of
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`individual GPS point coordinates corresponding to the user’s movement along the forward path.
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`PX 2 at 1:13-61.
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`Thus, the patent explains, “a need exist[ed] for a system that [was] capable of backtracking
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`or retracing one’s steps in order to avoid dangerous or impassable objects while being able to
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`ignore minor deviations in the traversed path.” Id. at 1:58-61. The ‘987 Patent solves this problem.
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`In particular, the invention enabled the ability to save a forward path in a GPS device that would
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`allow a user to retrace his steps on a proven route, as opposed to a new and potentially unsafe or
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`unreliable path. Dkt. 1 ¶¶ 29, 30; PX 2 at 1:64-3:29. This would be especially critical in
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`suboptimal conditions, such as fog or severe weather, where it would be difficult to navigate back
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`to a starting point. Dkt. 1 ¶ 29; PX 2 at 1:34-45.
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`The invention further overcame the system resource issues—memory, processing, and
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`display limitations—inherent to GPS systems of the day. Specifically, the invention makes use of
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`a point reduction / compression algorithm to intelligently optimize the number of forward-path
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`points used during the creation of a historical return path. This solution both minimized the
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`memory and computational constraints on the system, while also maintaining topological fidelity
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`to the originally traveled path. See PX 2 at Abstract, 1:64-2:10; Dkt. 1 ¶¶ 29, 30.
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`2. Inventions Disclosed and Claimed in the ‘987 Patent
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`As described in connection with FIG. 2, and illustrated below, the invention solves the
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`above challenges by creating paths using a subset of previously-traversed points. In particular, as
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`set forth in the specification, forward path information stored in the memory includes a begin point
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`[point “B”; red] and an end point [point “E”; blue], and the historical path is created through the
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`process of evaluating distances from intermediate points [orange] against a straight line defined
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`by the start and end points [purple]. In other words, significant deviations are preserved
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`(maintaining path fidelity) while minor deviations are not (minimizing system burden). And, as
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`elsewhere explained in the patent, the above concepts may be iterative—meaning that the “start”
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`and “end” points used to assess deviations can represents particular segments of the larger route.
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`As shown, for example, in FIG. 5 below, the start and end points (“B” and “E”) are used to assess
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`the first three points before their values are changed to the next path segment:
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`PX 2 at FIG. 2, 4:9-53, FIGS. 4-6, 6:9-21.
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`3. Claims of The ‘987 Patent
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`Garmin’s Opposition To Defendant’s Motion To Dismiss (Case No. 16-cv-2806)
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`Garmin asserts that Defendant infringes at least Claim 11 of the ‘987 Patent. Dkt. 1 at 30-
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`35. Claim 11 of the ‘987 Patent depends from claim 9, both of which provide:
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`
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`PX 2 at 8:4-12, 17-25.
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`Claim 11 specifies three structures relevant to the computer-aided GPS arts: a GPS
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`receiver, a memory for storing locati