Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 1 of 24 PageID #: 84
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`SLYDE ANALYTICS LLC,
`
`Plaintiff,
`
`v.
`
`GARMIN LTD. and GARMIN
`CORPORATION,
`
`Defendants.
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 2:24-cv-00215-RWS-RSP
`
`JURY TRIAL DEMANDED
`
`
`
`GARMIN LTD.’S ANSWER TO COMPLAINT
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`SLYDE ANALYTICS LLC,
`
`Plaintiff,
`
`v.
`
`GARMIN LTD. and GARMIN
`CORPORATION,
`
`Defendants.
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 2:24-cv-00215-RWS-RSP
`
`JURY TRIAL DEMANDED
`
`
`
`GARMIN LTD.’S ANSWER TO COMPLAINT
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 2 of 24 PageID #: 85
`
`Defendant Garmin Ltd. (“Garmin Ltd.”) responds to Plaintiff’s Complaint as follows:
`
`THE PARTIES
`
`1.
`
`Garmin Ltd. is without information sufficient to respond to this allegation and
`
`therefore denies same.
`
`2.
`
`Garmin Ltd. admits it is a Swiss company, organized and existing under the laws
`
`of Switzerland, with a principal place of business located at Mühlentalstrasse 2, 8200
`
`Schaffhausen, Switzerland. Garmin admits that some third parties may sell Garmin products at
`
`the addresses listed. As to all remaining facts, denied.
`
`3.
`
`Garmin Corporation has not yet been served. Garmin Corporation therefore has
`
`no obligation to respond to Slyde’s Complaint and does not do so herein.
`
`JURISDICTION
`
`4.
`
`Garmin Ltd. admits that this Court has subject matter jurisdiction and that this is a
`
`patent action. Garmin denies any and all allegations of infringement.
`
`5.
`
`Garmin Ltd. denies that jurisdiction is proper. For this matter alone, Garmin
`
`waives its right to move to dismiss for lack of jurisdiction.
`
`6.
`
`Garmin Ltd. admits that venue is proper pursuant to 28 U.S.C. § 1391(c)(3). As
`
`to all other facts, denied.
`
`ASSERTED PATENTS
`
`7.
`
`Garmin Ltd. admits that the USPTO issued the ’033 Patent. None of the other
`
`statements in paragraph 7 are allegations subject to admittance or denial under Rule 8.
`
`8.
`
`Garmin Ltd. admits that the USPTO issued the ’922 Patent. None of the other
`
`statements in paragraph 8 are allegations subject to admittance or denial under Rule 8.
`
`1
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 3 of 24 PageID #: 86
`
`9.
`
`Garmin Ltd. admits that the USPTO issued the ’678 Patent. None of the other
`
`statements in paragraph 9 are allegations subject to admittance or denial under Rule 8.
`
`10.
`
`Garmin Ltd. admits that the USPTO issued the ’085 Patent. None of the other
`
`statements in paragraph 10 are allegations subject to admittance or denial under Rule 8.
`
`11.
`
`Garmin Ltd. admits that the USPTO issued the ’457 Patent. None of the other
`
`statements in paragraph 11 are allegations subject to admittance or denial under Rule 8.
`
`12.
`
`Garmin Ltd. admits that the USPTO issued the ’018 Patent. None of the other
`
`statements in paragraph 12 are allegations subject to admittance or denial under Rule 8.
`
`13.
`
`Garmin Ltd. admits that the USPTO issued the ’134 Patent. None of the other
`
`statements in paragraph 13 are allegations subject to admittance or denial under Rule 8.
`
`14.
`
`Garmin Ltd. admits that the USPTO issued the ’809 Patent. None of the other
`
`statements in paragraph 14 are allegations subject to admittance or denial under Rule 8.
`
`15.
`
`Garmin Ltd. admits that the USPTO issued the ’696 Patent. None of the other
`
`statements in paragraph 15 are allegations subject to admittance or denial under Rule 8.
`
`16.
`
`Denied.
`
`17.
`
`Garmin Ltd. is without information sufficient to respond to these allegations and
`
`therefore denies same.
`
`18.
`
`Denied.
`
`FACTUAL ALLEGATIONS
`
`19.
`
`Garmin Ltd. admits that the named inventors on the ’033 Patent are Pascal Pozzo
`
`Di Borgo and Jorg Hysek. All other allegations are denied.
`
`20.
`
`Garmin Ltd. admits that the named inventors on the ’922 Patent are Pascal Pozzo
`
`2
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 4 of 24 PageID #: 87
`
`Di Borgo and Jorg Hysek. All other allegations are denied.
`
`21.
`
`Ltd. Garmin admits the named inventors are Alex Bezinge, Adrian Mohni, Daniel
`
`Pfeifer, and Musa Dogan. All other allegations are denied.
`
`22.
`
`Garmin Ltd. admits the named inventors are Patrick Flaction, Jacques Quievre,
`
`and Jean- Benoit Morin. Garmin denies all other allegations.
`
`23.
`
`Garmin Ltd. admits the named inventor is Patrick Flaction. Garmin denies all
`
`other allegations.
`
`24.
`
`Garmin Ltd. admits the named inventors are Jérôme Corre, Steve DeVènes,
`
`Frédéric Lamon, Stefan Hochuli Paychère, and Christophe Ramstein. Garmin denies all other
`
`allegations.
`
`25.
`
`Garmin Ltd. admits the named inventors are Cyrille Gindre, Frederic Lamon.
`
`Christophe Ramstein, and Patrick Flaction. Garmin denies all other allegations.
`
`26.
`
`Denied.
`
`COUNT I
`
`(Infringement of the ’678 Patent)
`
`27.
`
`Garmin Ltd. incorporates by reference its responses in paragraphs 1-26 as if fully
`
`set forth herein.
`
`28.
`
`Admit that Garmin Ltd. has not taken a license to any of the Asserted Patents.
`
`29.
`
`Denied.
`
`30.
`
`Denied.
`
`31.
`
`Garmin Ltd. admits that the Forerunner 965 can be turned on and off. Garmin
`
`admits that specific watch can be set in various ways to preserve battery life. As to any other
`
`3
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 5 of 24 PageID #: 88
`
`allegations in this paragraph, denied.
`
`32.
`
`Garmin Ltd. admits that the Forerunner 965 has a touch display, an accelerometer,
`
`and several processors. As to the remaining allegations, denied.1
`
`33.
`
`Denied.
`
`34.
`
`Garmin Ltd. admits that the Forerunner 965 has a feature a customer can select
`
`that allows a “Gesture” to turn on the screen. That Gesture is turning your arm to look at your
`
`wrist. As to all other allegations, denied.
`
`35.
`
`Denied.
`
`36.
`
`Denied.
`
`37.
`
`Denied.
`
`38.
`
`Denied.
`
`39.
`
`Denied.
`
`COUNT II
`
`(Infringement of the ’085 Patent)
`
`40.
`
`Garmin Ltd. incorporates by reference its responses in paragraphs 1-39 as if fully
`
`set forth herein.
`
`41.
`
`Garmin Ltd. admits that it has not taken a license to any of the Asserted Patents.
`
`42.
`
`Denied.
`
`43.
`
`Denied.
`
`
`1 See Garmin Forerunner 965 Watch Owner’s Manual at p. 81, available at:
`https://www8.garmin.com/manuals/webhelp/GUID-0221611A-992D-495E-8DED-
`1DD448F7A066/EN-US/Forerunner_965_OM_EN-US.pdf.
`
`4
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 6 of 24 PageID #: 89
`
`44.
`
`Garmin Ltd. admits that the Forerunner 965 can be turned on and off. Garmin
`
`Ltd. admits that watch can be set in various ways to preserve battery life. As to any other
`
`allegations in this paragraph, denied.
`
`45.
`
`Denied.
`
`46.
`
`Denied.
`
`47.
`
`Garmin Ltd. admits that a user can turn the Forerunner 965 on and off. As to the
`
`remaining allegations, denied.
`
`48.
`
`Denied.
`
`49.
`
`Denied.
`
`50.
`
`Denied.
`
`51.
`
`Denied.
`
`52.
`
`Denied.
`
`COUNT III
`
`(Infringement of the ’033 Patent)
`
`53.
`
`Garmin Ltd. incorporates by reference its responses in paragraphs 1-52 as if fully
`
`set forth herein.
`
`54.
`
`Garmin Ltd. admits that it has not taken a license to any of the Asserted Patents.
`
`55.
`
`Denied.
`
`56.
`
`Denied.
`
`57.
`
`Garmin Ltd. admits the Garmin Forerunner 965 is a wristwatch with an electronic
`
`display and processors. As to all remaining allegations, denied.
`
`5
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 7 of 24 PageID #: 90
`
`58.
`
`Garmin Ltd. admits that users can download various watch faces. Garmin Ltd.
`
`denies that any of its watch faces meet all of the limitations of the Asserted Claims.
`
`59.
`
`Denied.
`
`60.
`
`Denied.
`
`61.
`
`Denied.
`
`62.
`
`Denied.
`
`63.
`
`Denied.
`
`COUNT IV
`
`(Infringement of the ’922 Patent)
`
`64.
`
`Garmin Ltd. incorporates by reference its responses in paragraphs 1-63 as if fully
`
`set forth herein.
`
`65.
`
`Garmin Ltd. admits that it has not taken a license to any of the Asserted Patents.
`
`66.
`
`Denied.
`
`67.
`
`Denied.
`
`68.
`
`Garmin Ltd. admits that the Forerunner 965 is a watch with a touch screen display.
`
`As to all other allegations, denied.
`
`69.
`
`Garmin Ltd. admits that the Forerunner 965 has “glance loop and menus.” As to
`
`the remaining allegations, denied.
`
`70.
`
`Denied.
`
`71.
`
`Denied.
`
`72.
`
`Denied.
`
`6
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 8 of 24 PageID #: 91
`
`73.
`
`Denied.
`
`74.
`
`Denied.
`
`COUNT V
`
`(Infringement of the ’457 Patent)
`
`75.
`
`Garmin Ltd. incorporates by reference its responses in paragraphs 1-74 as if fully
`
`set forth herein.
`
`76.
`
`Garmin Ltd. admits that it has not taken a license to any of the Asserted Patents.
`
`77.
`
`Denied.
`
`78.
`
`Denied.
`
`79.
`
`Garmin Ltd. admits that the Forerunner 965 has a rechargeable battery. As to any
`
`remaining allegations, denied.
`
`80.
`
`Garmin Ltd. admits that the Forerunner 965 has a triaxial accelerometer that
`
`collects acceleration data. As to all other allegations, denied.
`
`81.
`
`Garmin Ltd. admits that the Forerunner 965 is a watch and that it has a display.
`
`As to all other allegations, denied.
`
`82.
`
`Garmin Ltd. admits that the Forerunner 965 is a watch that tracks running data,
`
`such as stride and cadence. As to all other allegations, denied.
`
`83.
`
`Garmin Ltd. admits that the Forerunner 965 is a watch that tracks running data,
`
`such as stride and cadence. As to all other allegations, denied.
`
`84.
`
`Denied.
`
`85.
`
`Denied.
`
`86.
`
`Denied.
`
`7
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 9 of 24 PageID #: 92
`
`87.
`
`Denied.
`
`88.
`
`Denied.
`
`COUNT VI
`
`(Infringement of the ’018 Patent)
`
`89.
`
`Garmin Ltd. incorporates by reference its responses in paragraphs 1-88 as if fully
`
`set forth herein.
`
`90.
`
`Garmin Ltd. admits that it has not taken a license to any of the Asserted Patents.
`
`91.
`
`Denied.
`
`92.
`
`Denied.
`
`93.
`
`Garmin Ltd. admits that the Forerunner 965 is a watch that tracks running data,
`
`such as stride and cadence. As to all other allegations, denied.
`
`94.
`
`Garmin Ltd. admits that the Forerunner 965 has a rechargeable battery. As to the
`
`other allegations, denied.
`
`95.
`
`Garmin Ltd. admits that the Forerunner 965 has a triaxial accelerometer. As to
`
`all other allegations, denied.
`
`96.
`
`Admit that the Forerunner 965 uses GPS and has a GPS receiver. As to any other
`
`allegations, denied.
`
`97.
`
`Garmin Ltd. admits that the Forerunner 965 employs GPS and has a single 3-axis
`
`accelerometer to track data such as stride and cadence. As to all other allegations, denied.
`
`98.
`
`Garmin Ltd. admits that the Forerunner 965 has processors and employs GPS and
`
`has accelerometers to track data such as stride and cadence. As to all other allegations, denied.
`
`99.
`
`Garmin Ltd. admits that a user can choose to pair the Forerunner 965 with the
`
`Garmin Connect application. As to all other allegations, denied.
`
`8
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 10 of 24 PageID #: 93
`
`100. Denied.
`
`101. Denied.
`
`102. Denied.
`
`103. Denied.
`
`104. Denied.
`
`COUNT VII
`
`(Infringement of the ’134 Patent)
`
`105. Garmin Ltd. incorporates by reference its responses in paragraphs 1-104 as if fully
`
`set forth herein.
`
`106. Garmin Ltd. admits that it has not taken a license to any of the Asserted Patents.
`
`107. Denied.
`
`108. Denied.
`
`109. The Garmin Forerunner 965 comprises an accelerometer adapted to be worn by an
`
`athlete close to the center of gravity of the athlete. For example, the Garmin Forerunner 965
`
`includes, among other movement sensors, an acceleration sensor: Garmin Ltd. admits that the
`
`Forerunner 965 includes an accelerometer. As to all other allegations, denied.
`
`110. Garmin Ltd. admits that the Forerunner 965 is worn by the user as a watch and
`
`that it contains an accelerometer. As to all other allegations, denied.
`
`111. Denied.
`
`112. Denied.
`
`113. Denied.
`
`114. Denied.
`
`115. Denied.
`
`9
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 11 of 24 PageID #: 94
`
`COUNT VIII
`
`(Infringement of the ’809 Patent)
`
`116. Garmin Ltd. incorporates by reference its responses in paragraphs 1-115 as if fully
`
`set forth herein.
`
`117. Garmin Ltd. admits that it has not taken a license to any of the Asserted Patents.
`
`118. Denied.
`
`119. Denied.
`
`120. Garmin Ltd. admits that the Forerunner 965 can provide running data such as
`
`pace. As to all other allegations, denied.
`
`121. Garmin Ltd. admits that the Forerunner 965 employs GPS and an accelerometer.
`
`As to all other allegations, denied.
`
`122. Garmin Ltd. admits that the Forerunner 965 can store running data. As to all other
`
`allegations, denied.
`
`123. Denied.
`
`124. Denied.
`
`125. Denied.
`
`126. Denied.
`
`127. Denied.
`
`128. Denied.
`
`129. Denied.
`
`COUNT IX
`
`(Infringement of the ’696 Patent)
`
`10
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 12 of 24 PageID #: 95
`
`130. Garmin Ltd. incorporates by reference its responses in paragraphs 1-129 as if fully
`
`set forth herein.
`
`131. Garmin Ltd. admits that it has not taken a license to any of the Asserted Patents.
`
`132. Denied.
`
`133. Denied.
`
`134. GarminLtd. admits that the Forerunner 965 has processors and an accelerometer
`
`and is worn on the wrist. As to all other allegations, denied.
`
`135. Denied.
`
`136. Denied.
`
`137. Denied.
`
`138. Denied.
`
`139. Denied.
`
`DEMAND FOR JURY TRIAL
`
`Garmin Ltd. hereby demands a jury for all issues so triable.
`
`PRAYER FOR RELIEF
`
`Garmin Ltd. denies that Slyde is entitled to any relief so requested. Garmin demands a jury
`
`trial on its affirmative defenses and counterclaims, infra.
`
`
`
`11
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 13 of 24 PageID #: 96
`
`GARMIN LTD.’SAFFIRMATIVE DEFENSES
`
`FIRST DEFENSE: Non-Infringement
`
`1.
`
`Garmin Ltd. does not infringe and has not infringed (directly, contributorily, or by
`
`inducement), either literally or under the doctrine of equivalents, and is not liable for infringement
`
`of any valid and enforceable claim the Asserted Patents.
`
`SECOND DEFENSE: Invalidity
`
`2.
`
`The claims of the Asserted Patents are invalid for failure to satisfy the conditions
`
`of patentability set forth in 35 U.S.C. §§ 1 et seq., including sections 101, 102, 103, 112, 115, 116,
`
`119, 132, 251, 256, and/or 282.
`
`THIRD DEFENSE: Failure to Mark
`
`3.
`
`Slyde’s claims for damages prior to the filing of this lawsuit are barred to the extent
`
`Slyde, its predecessors-in-interest, or licensees failed to comply with the requirements of 35 U.S.C.
`
`§ 287, including its marking requirement. In particular, Slyde fails to identify any facts or
`
`allegations that could establish that Slyde or its licensees complied with the marking requirements
`
`of 35 U.S.C. § 287 for any practicing products, and therefore Slyde is not entitled to seek damages
`
`any earlier than the date it can establish actual notice of the alleged infringement.
`
`FOURTH DEFENSE: Equitable Estoppel
`
`4.
`
`Slyde’s claims of patent infringement are barred in whole or in part by the equitable
`
`doctrines of waiver, estoppel, acquiescence, patent misuse, and/or unclean hands.
`
`5.
`
`Specifically, Slyde’s claims of patent infringement pertaining to the Myotest
`
`Asserted Patents (nos. ’457, ’134, ’018 and ’696) are unenforceable due to equitable estoppel.
`
`6.
`
`Myotest accused Garmin’s Ltd.’s subsidiary, Garmin International (“Garmin or
`
`“Garmin International”) of infringement in early 2014. Specifically, Myotest accused Garmin of
`
`12
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 14 of 24 PageID #: 97
`
`infringing Myotest’s patents covering using an accelerometer and center of gravity to measure a
`
`runner’s stride (“Center of Gravity Patents” or “CoG Patents”).
`
`7.
`
`From March 2014 to February 2016 Garmin and Myotest engaged in several
`
`conversations regarding Myotest’s infringement allegations.
`
`8.
`
`Garmin repeatedly demonstrated the invalidity of Myotest’s CoG Patents and
`
`Garmin’s non-infringement of same.
`
`9.
`
`For example, in March 2014 Garmin explained that accelerometers and center of
`
`mass/gravity have been used for 50 years to measure running stride.
`
`10.
`
`Garmin also provided prior art to Myotest including, for example, “Mechanical
`
`work in running,” G. A. CAVAGNA, F. P. SAIBENE, AND R. MARGARIA (1963).
`
`11.
`
`Regarding non-infringement, Garmin explained that its products do not use center
`
`of gravity or center of mass.
`
`12.
`
`Over the next two years, Garmin also explained the following non-infringement
`
`positions:
`
`a.
`
`the testing and jumping limitations of all claims of U.S. Patent No.
`
`8,655,618 are not met by Garmin’s products;
`
`b.
`
`the slope information of claim 12 of U.S. Patent Application 2014-0277633
`
`is not met by Garmin’s products;
`
`c.
`
`the predefined event requirement of claim 1 of U.S. Patent Application
`
`2014-0277633 is not met by Garmin’s products;
`
`d.
`
`the bearing force limitation of claim 18 of U.S. Patent Application 2013-
`
`0190657 is not met by Garmin’s products; and
`
`13
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 15 of 24 PageID #: 98
`
`e.
`
`the allowed claims of EP11725708.9 and do not relate to Garmin’s
`
`products. Garmin’s HRM-RUN product is not capable of measuring
`
`movement of a runner’s “center of gravity” as required by all claims of
`
`EP11725708.9. The HRM-RUN product must be affixed near the user’s
`
`heart to monitor the user’s heart rate. In contrast, the user’s center of gravity
`
`is near the user’s waist as explained in Myotest’s patent applications. The
`
`vertical oscillation measured by the HRM-RUN is therefore a measurement
`
`of torso movement and not a measurement of the user’s center of gravity.
`
`13.
`
`And in a letter dated February 26, 2016, Garmin explained:
`
`a.
`
`We disagree with you regarding the scope of Myotest’s patent claims
`
`including the meaning of the term “center of gravity.” The third-party web
`
`page you linked from www.motustriathlon.com appears to be inactive and
`
`no longer available to the public. Nevertheless, the comments of a random
`
`person on the internet do not change the fact that a runner’s center of gravity
`
`is near his or her waist (as described and illustrated in Myotest’s patent
`
`applications) and not across the user’s heart. And, as we’ve repeatedly
`
`discussed, it’s been known for 50 years to use an accelerometer to measure
`
`a runner’s vertical oscillation. This concept cannot be validly patented by
`
`Myotest today.
`
`b.
`
`We’re happy to review any additional materials you have regarding
`
`Myotest’s patent applications and which address the various questions
`
`raised in Garmin’s December 2015 letter. For example, in addition to the
`
`14
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 16 of 24 PageID #: 99
`
`center of gravity issue described above, we do not understand how Garmin’s
`
`products can meet many limitations of Myotest’s patent claims, such as:
`
`i.
`
`the testing and jumping limitations of all claims of U.S. Patent No.
`
`8,655,618,
`
`ii.
`
`the slope information of claim 12 of U.S. Patent Application 2014-
`
`0277633,
`
`iii.
`
`the predefined event requirement of claim 1 of U.S. Patent
`
`Application 2014-0277633, or
`
`iv.
`
`the bearing force limitation of claim 18 of U.S. Patent Application
`
`2013-0190657.
`
`14.
`
`After Garmin’s detailed explanations of invalidity and non-infringement over a
`
`period of almost two years, Myotest went silent and never reached out to Garmin again.
`
`15. Myotest, through misleading conduct (silence), lead Garmin to reasonably infer that
`
`the Myotest does not intend to enforce its patents against Garmin.
`
`16.
`
`The asserted Myotest patents are either the exact patents discussed between Garmin
`
`and Myotest, are progeny of the CoG Patents and/or contain the same or similar claim scope as the
`
`CoG Patents.
`
`17.
`
`Garmin reasonably relied on Myotest’s silence as evidence that Garmin’s products
`
`do not infringe the CoG Patents and/or that said patents are invalid.
`
`18.
`
`Garmin relied on Myotest’s silent admission of invalidity and non-infringement by
`
`expanding its product lines, including product lines specifically accused of infringement by
`
`Myotest and again accused of infringement here.
`
`19.
`
`Slyde is Myotest’s successor-in-interest.
`
`15
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 17 of 24 PageID #: 100
`
`20.
`
`21.
`
`Equitable estoppel also bars suit filed by a successor-in-interest.
`
`Garmin Ltd. and/or Garmin International would be materially prejudiced by
`
`allowing Myotest and its successor-in-interest to sue Garmin for patent infringement based on CoG
`
`Patents after a decade of silence.
`
`FIFTH DEFENSE: Standing
`
`22.
`
`Slyde’s claims for patent infringement are barred in whole or in part to the extent
`
`Slyde lacks standing. Specifically, the original patentees and intermediaries thereto did not
`
`transfer all substantial rights to Slyde.
`
`SIXTH DEFENSE: No Liability
`
`23.
`
`Garmin Ltd. does not make, use, sell, or import any of the Accused Products.
`
`Garmin cannot be held liable under any of the provisions of 35 U.S.C. § 271.
`
`GARMIN LTD.’S COUNTERCLAIMS
`
`THE PARTIES
`
`24.
`
`Defendant, Counterclaim Plaintiff Garmin Ltd. is a corporation organized and
`
`existing under the laws of Switzerland, with a principal place of business located at
`
`Mühlentalstrasse 2, 8200 Schaffhausen, Switzerland.
`
`25.
`
`Upon information and belief, Counterclaim-Defendant Slyde is a limited liability
`
`company organized and existing under the laws of the State of Texas. Slyde alleges that it has an
`
`office at 104 East Houston Street, Suite 170, Marshall, TX 75670 but Garmin has not been able to
`
`verify that fact.
`
`JURISDICTION AND VENUE
`
`26.
`
`This is an action for declaratory judgment under 28 U.S.C. §§ 2201 and 2202. This
`
`Court has subject matter jurisdiction over these Counterclaims under 28 U.S.C. §§ 1331 and
`
`1338(a). These Counterclaims arise under the patent laws of the United States.
`
`16
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 18 of 24 PageID #: 101
`
`27.
`
`This Court has personal jurisdiction over Slyde, at least because by initiating this
`
`lawsuit, Slyde has submitted to the jurisdiction of this District.
`
`28.
`
`Venue for these Counterclaims is proper in this District under 28 U.S.C. §§ 1391
`
`and 1400.
`
`29.
`
`30.
`
`FIRST COUNTERCLAIM: Non-Infringement
`
`Garmin Ltd. does not infringe any claim of the Asserted Patents.
`
`Garmin Ltd. incorporates by reference the facts set forth in Garmin Ltd.’s Equitable
`
`Estoppel Affirmative Defense, supra.
`
`31.
`
`Garmin Ltd. does not infringe any claim of the ’085 Patent. For example, none of
`
`the Accused Products employ a “final position.”
`
`32.
`
`Garmin Ltd. does not infringe any claim of the ’809 Patent. For example, the
`
`Accused Products to not provide a “probability” to the end user.
`
`33.
`
`Garmin Ltd. does not infringe any claim of the ’696 Patent. For example, none of
`
`the Accused Products measure a “center of mass.”
`
`34.
`
`Garmin Ltd. does not infringe any claim of the ’033 Patent. For example, the
`
`Accused Products do not synchronize the watch as claimed.
`
`35.
`
`Garmin Ltd. does not infringe any claim of the ’457 Patent. For example, the
`
`Accused Products do not employ the center of gravity as claimed.
`
`36.
`
`Garmin Ltd. does not infringe any claim of the ’134 Patent. For example, the
`
`Accused Products do not employ the center of gravity as claimed.
`
`37.
`
`Garmin Ltd. does not infringe any claim of the ’922 Patent. For example, the
`
`Accused Products do not have the claimed “cards.”
`
`38.
`
`Garmin Ltd. does not infringe any claim of the ’678 Patent. For example, none of
`
`17
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 19 of 24 PageID #: 102
`
`the Accused Products “discriminate between gesture and no gesture” as claimed.
`
`39.
`
`Garmin Ltd. does not infringe any claim of the ’018 Patent. For example, the
`
`Accused Products do not employ the center of gravity as claimed.
`
`SECOND COUNTERCLAIM: Invalidity of the Myotest Asserted Patents
`
`40.
`
`The claims of the Asserted Myotest Patents are invalid for failure to satisfy the
`
`conditions of patentability set forth in 35 U.S.C. §§ 1 et seq., including sections 101, 102, 103,
`
`112, 115, 116, 119, 132, 251, 256, and/or 282.
`
`41.
`
`Garmin Ltd. incorporates by reference the facts set forth in Garmin’s Equitable
`
`Estoppel Affirmative Defense, supra.
`
`42.
`
`Each of the claims of the Myotest Asserted Patents (nos. ’457, ’134, ’018 and ’696)
`
`are invalid as anticipated and/or rendered obvious by Myotest’s own public disclosures. For
`
`example:
`
`a. Myotest RUN - Entraînement phase Développement
`
`(https://www.youtube.com/watch?v=shMTKVz96Jg )
`
`b. Mesurer la performance musculaire, accélérométrie, préparation
`
`physique
`
`(https://web.archive.org/web/20100204171807/http:/www.myotest.eu/)
`
`c. RunCheck stride analysis from Myotest
`
`(https://www.youtube.com/watch?v=CLhqXB3_Zqo )
`
`d. Vertical Jump test using the Myotest
`
`(https://www.youtube.com/watch?v=okWieqvltXY )
`
`e. Vertical Jump test using the Myotest
`
`(https://www.youtube.com/watch?v=okWieqvltXY )
`
`18
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 20 of 24 PageID #: 103
`
`f.
`
` Validity and Reliability of the Myotest Accelerometric System for the
`
`Assessment of Vertical Jump Height
`
`(https://citeseerx.ist.psu.edu/document?repid=rep1&type=pdf&doi=86
`
`094a850c408a66ea01632429c27b9560ba1325 )
`
`g. www.myotest.ch
`
`(https://web.archive.org/web/20080502202611/http:/www.myotest.ch/
`
`getdoc/127ea693-7c35-41bd-8fde-159b1876ecf5/Video-de-
`
`presentation.aspx )
`
`h. Fitness Testing using Myotest
`
`(https://www.topendsports.com/testing/products/accelerometer-
`
`myotest.htm )
`
`i. Validity and Reliability of the Myotest Accelerometric System for the
`
`Assessment of Vertical Jump Height
`
`(https://citeseerx.ist.psu.edu/document?repid=rep1&type=pdf&doi=86
`
`094a850c408a66ea01632429c27b9560ba1325)
`
`j. Vertical Jump test using the Myotest
`
`(https://www.youtube.com/watch?v=okWieqvltXY)
`
`k. Vertical Jump test using the Myotest
`
`(https://www.youtube.com/watch?v=4IUhEY0P0KE)
`
`l. Myotest Bench Press Assessment
`
`(https://www.youtube.com/watch?v=cQe5QZGxEkI)
`
`m. https://www.youtube.com/@srdamman/videos
`
`n. RunCheck stride analysis from Myotest
`
`19
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 21 of 24 PageID #: 104
`
`(https://www.youtube.com/watch?v=CLhqXB3_Zqo)
`
`o. Construct Validity Of The Myotest® In Measuring Force And Power
`
`Production (https://journals.lww.com/nsca-
`
`jscr/abstract/2010/01001/construct_validity_of_the_myotest__in_meas
`
`uring.88.aspx)
`
`43.
`
`Each of the Myotest Patents are invalid and/or obvious based on Garmin
`
`International’s prior art, including the following Forerunner models: 201, 301, 305, 405, 310XT,
`
`among others.
`
`THIRD COUNTERCLAIM: Invalidity of The Slyde S.A. Patents
`
`44.
`
`The claims of the Asserted Slyde S.A. Patents are invalid for failure to satisfy the
`
`conditions of patentability set forth in 35 U.S.C. §§ 1 et seq., including sections 101, 102, 103,
`
`112, 115, 116, 119, 132, 251, 256, and/or 282.
`
`45.
`
`For example, the Slyde S.A. Patents (nos. ’033, ’922, ’085, ’678, ’809) are each
`
`invalid and/or rendered obvious by the following prior art.
`
`46.
`
`Each of the claims of the ’085 are anticipated or rendered obvious by the multiple
`
`Casio watches including the Casio G-Shock.
`
`47.
`
`Each of the claims of the ’809 Patent are invalid. For example, each of the claims
`
`of the ’809 are anticipated or rendered obvious by Garmin International’s Forerunner watches,
`
`such as the Forerunner 201, 301, 305, 405, 310XT, 910XT, and 610.
`
`48.
`
`Each of the claims of the ’696 Patent are invalid. For example, each of the claims
`
`of the ’696 are anticipated or rendered obvious by Garmin’s Forerunner watches, such as the
`
`Forerunner 201, 301, 305, 405, 310XT, 910XT, and 610.
`
`49.
`
`Each of the claims of the ’033 Patent are invalid. For example, Fawaz Gruosi’s
`
`20
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 22 of 24 PageID #: 105
`
`MECCANICO DG N03 TITANE watch (2009) anticipates or renders obvious all claims of the
`
`’033 Patent.
`
`50.
`
`Each of the claims of the ’457 Patent are invalid. For example, the Apple iPad
`
`anticipates or renders obvious all claims of the ’457 Patent. See Quantification of the Balance
`
`Error
`
`Scoring
`
`System
`
`with
`
`Mobile
`
`Technology
`
`-
`
`PMC
`
`(https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4576723/).
`
`51.
`
`Each of the claims of the ’134 Patent are invalid. For example, the Apple iPad
`
`anticipates or renders obvious all claims of the ’134 Patent. See Quantification of the Balance
`
`Error
`
`Scoring
`
`System
`
`with
`
`Mobile
`
`Technology
`
`-
`
`PMC
`
`(https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4576723/).
`
`52.
`
`Each of the claims of the ’922 Patent are invalid. For example, the Apple iPod
`
`Nano anticipates or renders obvious all claims of the ’922 Patent.
`
`53.
`
`Each of the claims of the ’678 Patent are invalid. For example, the Apple iPod
`
`Nano anticipates or renders obvious all claims of the ’678 Patent.
`
`54.
`
`Each of the claims of the ’018 Patent are invalid. For example, the Apple iPad
`
`anticipates or renders obvious all claims of the ’134 Patent. See Quantification of the Balance
`
`Error
`
`Scoring
`
`System
`
`with
`
`Mobile
`
`Technology
`
`-
`
`PMC
`
`(https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4576723/).
`
`PRAYER FOR RELIEF
`
`Garmin Ltd. seeks an order(s) finding:
`
`(1) Garmin Ltd. cannot be held liable for any other entities/person’s alleged
`
`infringement of the Asserted Patents as Garmin Ltd. does not itself violate any
`
`provision of § 271.
`
`21
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 23 of 24 PageID #: 106
`
`(2) Attorney’s fees and costs against Plaintiff and its counsel for suing an entity that
`
`cannot be held liable for any provision of § 271.
`
`(3) The Accused Products do not infringe the Asserted Patents.
`
`(4) The claims of the Asserted Patents are invalid.
`
`(5) Awarding Garmin fees under § 285.
`
`
`
`Dated: July 26, 2024
`
`Respectfully submitted,
`
`By: /s/ Melissa R. Smith
`Melissa R. Smith
`Texas Bar No.: 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`melissa@gillamsmithlaw.com
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`
`Rachael Lamkin
`California Bar No. 246066
`rachael.lamkin@bakerbotts.com
`Lute Yang (pro hac vice forthcoming)
`California Bar No. 341813
`lute.yang@bakerbotts.com
`BAKER BOTTS L.L.P.
`101 California Street, Suite 3200
`San Francisco, CA 94111
`Telephone: (415) 291-6200
`Facsimile: (415) 291-6300
`
`Emily Pyclik
`Texas Bar No.: 24110240
`BAKER BOTTS LLP
`401 S. 1st St., Suite 1300
`Austin, TX 78704
`emily.pyclik@bakerbotts.com
`Telephone: (512) 322-2615
`Facsimile: (512) 322-3615
`
`
`22
`
`
`
`Case 2:24-cv-00215-RWS-RSP Document 14 Filed 07/26/24 Page 24 of 24 PageID #: 107
`
`
`ATTORNEYS FOR DEFENDANTS,
`GARMIN LTD. AND GARMIN CORPORATION
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that on July 26, 2024, I electronically filed the foregoing with the Clerk of the
`
`Court using the CM/ECF system which will send notification of such filing to all counsel of
`
`record.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Melissa R. Smith
`
`
`
`
`
`23
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
