Case 2:15-cv-01575-JRG Document 36 Filed 03/18/16 Page 1 of 11 PageID #: 531
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`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:15-cv-01575-JRG
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`JURY TRIAL DEMANDED
`
`
`
`Plaintiff,
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`Defendant.
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`LOGANTREE LP,
`
`v.
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`FITBIT, INC.,
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`
`
`
`
`
`DEFENDANT FITBIT, INC.’S ANSWER, AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIMS TO PLAINTIFF’S ORIGINAL COMPLAINT
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`Defendant Fitbit, Inc. (“Fitbit”), by and through their undersigned counsel, responds to
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`Plaintiff LoganTree LP’s (“Plaintiff” or “LoganTree”) Original Complaint (“the Complaint”) as
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`follows:
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`ANSWER
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`1.
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`Fitbit admits that this action purports to be one for patent infringement against Fitbit
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`arising under Title 35 of the United States Code. Fitbit admits that LoganTree purports to assert
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`the reexamined U.S. Patent No. 6,059,576 (“the Reexamined ’576 Patent”) against Fitbit. Except
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`as so expressly admitted, denied.
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`PARTIES
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`2.
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`Fitbit lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations of Paragraph 2 of the Complaint and therefore denies those allegations.
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`3.
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`Admitted.
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`JURISDICTION AND VENUE
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`4.
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`Fitbit admits that this action purports to be an action for patent infringement arising
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`under Title 35 of the United States Code. Fitbit admits that this Court has jurisdiction over the
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`1
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`allegations in the Complaint as pleaded under 28 U.S.C. §§ 1331 and 1338(a). Except as so
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`expressly admitted, denied.
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`5.
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`Fitbit admits that this Court has personal jurisdiction over it with respect to the
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`asserted claims. Fitbit denies all other allegations in Paragraph 5 of the Complaint.
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`6.
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`Fitbit admits that it has previously been subject to personal jurisdiction in this Court
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`in Sportbrain Holdings, Inc. v. Fitbit, Inc., Civil Action No. 2:13-00212-JRG-RSP (E.D. Tex.);
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`FEGO Precision Industrial Co, Ltd. v. Fitbit, Inc., No. 2:14-cv-40 (E.D. Tex.); and Olivistar, LLC
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`v. Fitbit, Inc., No. 2:14-cv-536 (E.D. Tex.). Fitbit denies all other allegations in Paragraph 6 of
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`the Complaint.
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`7.
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`Fitbit denies that venue is proper in the Eastern District of Texas under 28 U.S.C.
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`§§ 1391(b) and 1400. Fitbit denies all other allegations in Paragraph 7 of the Complaint.
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`THE PATENT-IN-SUIT
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`8.
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`Fitbit admits that LoganTree purports to have attached to its Complaint as Exhibit
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`A a true and correct copy of the as-issued U.S. Patent No. 6,059,576 (“the ’576 Patent”) titled
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`“Training and Safety Device, System and Method to Aid in Proper Movement During Physical
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`Activity.” Except as so expressly admitted, denied.
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`9.
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`Fitbit admits that LoganTree purports to have attached to its Complaint as Exhibit
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`B a true and correct copy of a reexamination certificate for the ’576 Patent. Except as so expressly
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`admitted, denied.
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`10.
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`Fitbit admits that the Exhibit A, on its face, states that one of the inventors of the
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`’576 Patent is named Theodore L. Brann. Except as so expressly admitted, denied.
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`11.
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`Fitbit lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations of Paragraph 11 of the Complaint and therefore denies those allegations.
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`2
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`12.
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`Fitbit lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations of Paragraph 12 of the Complaint and therefore denies those allegations.
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`13.
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`Fitbit responds that the reexamination certificate for the ’576 Patent, which
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`LoganTree purports to have attached to the Complaint as Exhibit B, is a document that speaks for
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`itself. Fitbit denies all other allegations in Paragraph 13 of the Complaint.
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`COUNT ONE: ALLEGED INFRINGEMENT OF THE REEXAMINED ’576 PATENT
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`14.
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`15.
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`16.
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`17.
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`18.
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`19.
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`Fitbit incorporates by reference its responses to the foregoing paragraphs.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`PLAINTIFF’S PRAYER FOR RELIEF
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`Fitbit denies that LoganTree is entitled to any of the relief it requests.
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`AFFIRMATIVE DEFENSES
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`First Affirmative Defense (Invalidity)
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`20.
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`21.
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`Fitbit incorporates by reference its responses to the foregoing paragraphs.
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`The claims of the Reexamined ’576 Patent are invalid for failure to comply with
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`one or more of the requirements of Title 35 of the United States Code including, but not limited
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`to, Sections 101, 102, 103, 111, 112, 115, 116, and 256.
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`22.
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`For instance, one or more claims of the Reexamined ’576 Patent are invalid in view
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`of the prior art. For instance, the following prior art references anticipate, either expressly or
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`inherently, or render obvious, alone or in combination with one another, one or more claims of the
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`3
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`Reexamined ’576 Patent: (1) Canadian Patent No. 1,296,426, titled “Impact Detection
`
`Apparatus”; (2) EP No. 0779058, titled “Patient Activity Monitoring Device”; (3) U.S. Patent No.
`
`5,640,971, titled “Back Movement Monitor and Warning Device”; and (4) Christopher Verplatese,
`
`Inertial Proprioceptive Devices: Self-Motion-Sensing Toys And Tools (1996).
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`Second Affirmative Defense (Failure to Mark)
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`23.
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`24.
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`Fitbit incorporates by reference its responses to the forgoing paragraphs.
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`LoganTree’s claims are barred in whole or in part by its failure to provide adequate
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`notice under 35 U.S.C. § 287. For instance, LoganTree is not entitled to recover pre-suit damages
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`to the extent it failed to provide notice of actual infringement to Fitbit and failed to mark any
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`product it contends practiced one or more claims of the ’576 Patent or the Reexamined ’576 Patent,
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`including but not limited to the BackTalk device developed and sold by Theodore Brann and/or
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`Bio Kinetics Corporation.
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`Third Affirmative Defense (Non-Infringement)
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`25.
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`26.
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`Fitbit incorporates by reference its responses to the forgoing paragraphs.
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`Fitbit has not infringed and does not infringe directly, jointly, contributory, literally,
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`by the doctrine of equivalents or by inducement, any valid and enforceable claim of the
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`Reexamined ’576 Patent.
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`27.
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`LoganTree alleges that Fitbit has infringed and is currently infringing the
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`Reexamined ’576 Patent by making, using, offering for sale, or selling products including but not
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`limited to the Fitbit Zip, Fitbit One, Fitbit Flex, Fitbit Charge, Fitbit Charge HR, and Fitbit Surge
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`(“the Accused Devices”).
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`28.
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`29.
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`Fitbit denies LoganTree’s allegations of infringement.
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`No product Fitbit makes, markets, distributes, sells, or offers to sell, including but
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`Case 2:15-cv-01575-JRG Document 36 Filed 03/18/16 Page 5 of 11 PageID #: 535
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`not limited to the Accused Devices, infringes the Reexamined ’576 Patent. As properly construed,
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`at least claim 1 of the Reexamined ’576 Patent requires a movement sensor which measures the
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`angle of a movement. None of the Accused Devices practice, implement, or otherwise incorporate
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`the use of a movement sensor which measures the angle of a movement.
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`Fourth Affirmative Defense (Prosecution History Estoppel / Disclaimer)
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`30.
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`31.
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`Fitbit incorporates by reference its responses to the forgoing paragraphs.
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`By reasons of the proceedings in the USPTO, including the prosecution of the
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`applications that resulted in the asserted patents, LoganTree is estopped from construing one or
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`more claims of the Reexamined ’576 Patent to cover and include any product service or activity
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`of Fitbit and/or is prevented from asserting infringement under the doctrine of equivalents, and is
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`further estopped from construing one or more claims of the Reexamined ’576 Patent to claim scope
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`ceded during the prosecution of the ’576 Patent and Reexamined ’576 Patent in order to, for
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`example, avoid prior art.
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`32.
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`For instance, LoganTree is estopped from construing one or more claims of the
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`Reexamined ’576 Patent in a way that is inconsistent with the amendments offered by the applicant
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`in amendments submitted to the Patent Office on November 22, 1999, to traverse the prior art
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`relied upon by the Examiner in Office Action Final Rejection dated July 20, 1999.
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`Fifth Affirmative Defense (No Right to Injunctive Relief)
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`Fitbit incorporates by reference its responses to the forgoing paragraphs.
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`LoganTree is not entitled to injunctive relief at least because: (1) LoganTree has
`
`33.
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`34.
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`not suffered nor will it suffer irreparable harm as a result of Fitbit’s conduct; (2) any harm suffered
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`by LoganTree if an injunction were not granted would be outweighed by harm to Fitbit if an
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`injunction were granted; (3) LoganTree would have an adequate remedy at law if it were to prevail
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`on the merits in this action; and (4) the public interest would not be served by an injunction.
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`35.
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`On information and belief, LoganTree is a non-practicing entity which does not
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`compete with Fitbit.
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`Eighth Affirmative Defense (Limitation on Damages)
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`36.
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`LoganTree’s claim for damages is barred, in whole or in part, by 35 U.S.C. §§ 286
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`and/or 287(a) as a result of its failure to mark and/or the passage of time. LoganTree’s ability to
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`recover costs is barred by 35 U.S.C. § 288.
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`Ninth Affirmative Defense (Failure to State a Claim)
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`LoganTree has failed to state a claim for which relief can be granted.
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`For instance, with respect to its claims of indirect infringement against Fitbit,
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`37.
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`38.
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`LoganTree has failed to allege, with specificity or otherwise, Fitbit’s knowledge that Fitbit’s acts
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`constitute infringement of one or more claims of the Reexamined ’576 Patent.
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`39.
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`And, for instance, LoganTree has failed to state a claim because the Reexamined
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`’576 Patent is invalid because it is directed to patent ineligible subject matter. The Reexamined
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`’576 Patent claims nothing more than the abstract idea of measuring a person’s physical
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`movements and noting when movements have exceeded a certain limit.
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`40.
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`Further, LoganTree has failed to state a claim to the extent LoganTree continues to
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`accuse Fitbit’s Zip and One devices as infringing any claim of the Reexamined ’576 Patent.
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`LoganTree has failed to include those devices in its Infringement Contentions served on February
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`8, 2016 or provide detailed claim charts detailing alleged any infringement by those devices.
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`COUNTERCLAIMS
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`Counterclaim-plaintiff Fitbit counterclaims against counterclaim-defendant LoganTree as
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`follows:
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`6
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`THE PARTIES
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`41.
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`Fitbit is a Delaware corporation with its principal place of business at 150 Spear
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`Street, Suite 200, San Francisco, California 94105.
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`42.
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`Upon information and belief, LoganTree is a limited partnership formed under the
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`laws of Nevada with its principal place of business at 123 W. Nye Lane, Carson City, Nevada
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`89706.
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`JURISDICTION AND VENUE
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`43.
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`These counterclaims arise under Title 35 of the United States Code. The Court has
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`subject matter jurisdiction over these counterclaims pursuant to 28 U.S.C. §§ 1331, 1338(a), 2201,
`
`and 2202.
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`44.
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`This Court has personal jurisdiction and venue is appropriate because LoganTree
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`has consented to the propriety of venue in this Court by filing its claims for patent infringement
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`against Fitbit in this Court, in response to which these Counterclaims are asserted. By filing these
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`Counterclaims, Fitbit does not suggest, admit, or imply that venue for LoganTree’s Complaint is
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`proper in this Court. Fitbit consents to the transfer of these Counterclaims to the San Francisco
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`Division of the Northern District of California, if the Court determines that transferring
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`LoganTree’s claims to that district is appropriate.
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`45.
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`An actual controversy exists between Fitbit and LoganTree regarding the alleged
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`infringement and invalidity of the Reexamined ’576 Patent, by virtue of LoganTree’s Complaint
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`against Fitbit filed in this Court on October 2, 2015.
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`FIRST COUNTERCLAIM -- DECLARATORY JUDGMENT OF INVALIDITY
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`46.
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`Fitbit incorporates herein by reference the responses and allegations of the previous
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`paragraphs of this Answer, Affirmative Defenses, and Counterclaims.
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`47.
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`Fitbit denies that LoganTree is asserting a valid patent. The claims of the
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`Reexamined ’576 Patent are invalid for failure to satisfy one or more of the requirements of Title
`
`35 of the United States Code including, but not limited to, Sections 101, 102, 103, 111, 112, 115,
`
`116, and 256, and as alleged in Fitbit’s defenses, supra.
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`48.
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`The claims of the Reexamined ’576 Patent are invalid as anticipated or obvious in
`
`view of the prior art, including but not limited to the prior art references disclosed herein.
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`49.
`
`For example, Canadian Patent No. 1,296,426, titled “Impact Detection Apparatus”,
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`discloses a portable computing device capable of using sensors to measure movements based on
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`user-determined criteria, recording the time of those movements based on an internal computer
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`clock, and generating signals to display data related to the movements. A true and correct copy of
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`this publication is attached hereto as Exhibit 1.
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`50.
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`For another example, EP No. 0779058, titled “Patient Activity Monitoring Device”,
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`discloses devices for monitoring a person’s bodily movements and emitting an audible alarm when
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`a user’s movements exceed a predetermined threshold—e.g., when a person rises from a horizontal
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`resting position past a determined angle—and recording the time of that event. The device
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`disclosed therein is also capable of connecting to a computer running computer software capable
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`of interpreting, reporting, and evaluating movement data. A true and correct copy of this
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`publication is attached as Exhibit 2.
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`51.
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`For another example, U.S. Patent No. 5,640,971, titled “Back Movement Monitor
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`and Warning Device”, discloses a device for monitoring and recording movements of a user’s
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`torso along all three axes, and for sounding an audible alarm when the device detects movement
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`which exceeds user-adjustable thresholds for acceptable torso movement. A true and correct copy
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`of this publication is attached as Exhibit 3.
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`52.
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`For another example, an article by Christopher Verplatese, Inertial Proprioceptive
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`Devices: Self-Motion-Sensing Toys And Tools (1996), discloses the use of accelerometers,
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`gyroscopes, and other sensors in devices usable to record and detect when user-defined events
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`occur. A true and correct copy of this publication is attached as Exhibit 4.
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`53.
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`An actual and justiciable controversy exists between Fitbit and LoganTree by virtue
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`of the allegations of LoganTree’s Complaint in this action and Fitbit’s Answer as to the validity
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`of the Reexamined ’576 Patent.
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`54.
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`Fitbit is entitled to judgment that one or more claims of the ’576 Patent is not
`
`infringed.
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`SECOND COUNTERCLAIM -- DECLARATORY JUDGMENT OF
`NONINFRINGEMENT
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`Fitbit incorporates herein by reference the responses and allegations of the previous
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`55.
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`paragraphs of this Answer, Affirmative Defenses, and Counterclaims.
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`56.
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`Fitbit counterclaims against LoganTree pursuant to the patent laws of the United
`
`States, Title 35 of the United States Code, and the Declaratory Judgments Act, 28 U.S.C. §§ 2201
`
`and 2202.
`
`57.
`
`In its Complaint, LoganTree alleges that LoganTree has infringed and is currently
`
`infringing the Reexamined ’576 Patent by making, using, offering for sale, or selling products
`
`including but not limited to the Fitbit Zip, Fitbit One, Fitbit Flex, Fitbit Charge, Fitbit Charge HR,
`
`and Fitbit Surge.
`
`58.
`
`59.
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`Fitbit denies LoganTree’s allegations of infringement.
`
`No product Fitbit makes, markets, distributes, sells, or offers to sell infringes the
`
`Reexamined ’576 Patent. As properly construed, one or more claims of the Reexamined ’576
`
`Patent require a movement sensor which measures the angle of a movement. None of the Accused
`
`9
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`

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`Devices practice, implement, or otherwise incorporate the use of a movement sensor which
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`measures the angle of a movement.
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`60.
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`Fitbit has neither contributed to nor induced another party’s infringement of the
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`Reexamined ’576 Patent.
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`61.
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`An actual and justiciable controversy exists between Fitbit and LoganTree by virtue
`
`of the allegations of LoganTree’s Complaint in this action and Fitbit’s Answer as to the
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`noninfringement of the Reexamined ’576 Patent.
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`62.
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`Fitbit is entitled to judgment that one or more claims of the ’576 Patent is not
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`infringed by Fitbit.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Fitbit hereby demands a trial
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`by jury of all issues so triable.
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`FITBIT’S PRAYER FOR RELIEF
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`Wherefore, Fitbit respectfully requests that this Court enter judgment in its favor and
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`against LoganTree and grant the following relief:
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`a.
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`Judgment that none of the claims of the ’576 Patent have been infringed, either
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`directly or indirectly and either literally or under the doctrine of equivalents by Fitbit;
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`b.
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`Judgment that LoganTree’s Complaint be dismissed with prejudice, that each
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`request for relief therein be denied and that LoganTree recover nothing;
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`c.
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`d.
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`Judgment that the asserted patents are invalid and/or unenforceable;
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`An order, pursuant to 35 U.S.C. § 285, finding that this is an “exceptional” case
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`and awarding Fitbit its reasonable attorneys’ fees, expenses and costs incurred win this action.
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`e.
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`Bar LoganTree any recovery of costs;
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`Case 2:15-cv-01575-JRG Document 36 Filed 03/18/16 Page 11 of 11 PageID #: 541
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`f.
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`An order awarding Fitbit such other and further relief as this Court deems just and
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`proper.
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`Dated: March 18, 2016
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`
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`
`
`By:
`
`
`
`/s/ Eric H. Findlay
`ERIC H. FINDLAY
`FINDLAY CRAFT, P.C.
`102 North College Avenue, Suite 900
`Tyler, TX 75702
`Tel: 903-534-1100
`efindlay@findlaycraft.com
`
`Clement S. Roberts (admitted pro hac vice)
`Timothy S. Saulsbury (admitted pro hac
`vice)
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`Tel.: 415-362-6666
`Fax: 415-236-6300
`croberts@durietangri.com
`tsaulsbury@durietangri.com
`
`Attorneys for Defendant Fitbit, Inc.
`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(a)(3) on March 18, 2016.
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`
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`
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`_/s/ Eric H. Findlay ___
`Eric H. Findlay
`
`
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`11
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