Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 1 of 17 Page ID #:3545
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`LAMKIN IP DEFENSE
`RDL@LamkinIPDefense.com
`Rachael D. Lamkin (246066)
`One Harbor Drive, Suite 304
`Sausalito, CA 94965
`(916) 747-6091 Telephone
`
`Michelle L. Marriott (pro hac vice)
`michelle.marriott@eriseip.com
`Erise IP, P.A.
`7015 College Blvd.
`Suite 700
`Overland Park, KS 66211
`(913) 777-5600 Telephone
`(913) 777-5601 Facsimile
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`Attorneys for Defendants
`Garmin International, Inc. and Garmin Ltd.
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`Case No. 2:19-cv-06301-AB (KSx)
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`DEFENDANTS’ OPPOSITION
`TO PLAINTIFF’S RULE 54(B)
`MOTION
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`Hearing: 12/11/2020, at 10:00 am.
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`Philips North America, LLC,
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`Plaintiff, Counterclaim-Defendant
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`v.
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`Garmin International, Inc. and Garmin
`LTD
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`Defendants, Counterclaimants
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`Opp. to Rule 54(b) Motion
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`1
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 2 of 17 Page ID #:3546
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`TABLE OF CONTENTS
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`I.
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`II.
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`SUMMARY OF PERTINENT FACTS AND ARGUMENT……….…….4
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`THE ASSERTED CLAIMS OF THE PATENTS-IN-SUIT HAVE
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`CONSIDERABLE OVERLAP……………………………………………8
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`III. THE INSTITUTED ’233 IPR FURTHER WARRANTS A STAY OF
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`THIS MATTER WHILE PHILIPS’ RULE 54 APPEAL IS BEING
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`HEARD…………………………………………………………………....9
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`IV.
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`IF THIS HONORABLE COURT DOES NOT STAY THE ENTIRE
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`MATTER, IT SHOULD DENY PHILIPS’ RULE 54(B) MOTION…….13
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`V. GARMIN MET ITS MEET AND CONFER OBLIGATION……………15
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`VI. CONCLUSION…………………………………………………………..16
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`Opp. to Rule 54(b) Motion
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`2
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 3 of 17 Page ID #:3547
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`TABLE OF AUTHORITIES
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`23andMe, Inc. v. Ancestry.com DNA, LLC, No. 18-cv-02791-EMC, 2018 U.S. Dist. LEXIS
`188327 (N.D. Cal. Nov. 2, 2018). ................................................................................................ 16
`Curtis-Wright case. See, e.g., Curtiss-Wright Corp. v. Gen. Elec. Co., 446 U.S. 1, 4 100 S. Ct.
`1460 (1980) .................................................................................................................................. 14
`Drone v. Sz Dji Tech. Co., No. CV 19-04382-AB (AFMx), 2020 U.S. Dist. LEXIS 138497 (C.D.
`Cal. Mar. 17, 2020). ..................................................................................................................... 11
`Drone v. Sz Dji Tech. Co., No. CV 19-04382-AB (AFMx), 2020 U.S. Dist. LEXIS 138497 (C.D.
`Cal. Mar. 17, 2020) ...................................................................................................................... 12
`Fitniv case. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11(PTAB Mar. 20, 2020) ....... 10
`Nazomi Communs., Inc. v. Nokia Corp., No. C-10-04686 RMW, 2012 U.S. Dist. LEXIS 181332,
`(N.D. Cal. Dec. 21, 2012) ............................................................................................................ 14
`Seiko Epson Corp. v. Optoma Tech., Inc., 323 F. App'x 896, 898 (Fed. Cir. 2008). ...................... 15
`State Contracting and Eng'g Corp. v. Florida, 258 F.3d 1329, 1334 (Fed. Cir. 2001). .................. 14
`Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 830 (Fed. Cir. 2003); ................................. 14
`Wright Corp. v. Gen. Elec. Co., 446 U.S. 1, 4 100 S. Ct. 1460 (1980). .......................................... 14
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 4 of 17 Page ID #:3548
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`I.
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`SUMMARY OF PERTINENT FACTS & ARGUMENT
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`Philips asserted six patents against Garmin. (Dkt. No. 45, ¶48.) Only three
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`remain. The ’007 Patent was invalidated at claim construction (Dkt. No. 102),
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`Philips disclaimed the asserted claims of the ’958 Patent before the USPTO after
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`Garmin plead in its claim construction briefing that the ’958 claims cannot be
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`asserted against fitness products, and Philips has voluntarily withdrawn its
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`infringement allegations as to the ’192 Patent. (Lamkin Decl., ¶¶4-6.) Only the
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`’233 Patent (expired), the ’377 Patent (expired), and the ’542 Patent remain at-issue.
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`Further, the Patent Trial and Appeal Board recently instituted an IPR challenge
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`against all of the asserted claims of the ’233 Patent, finding a “reasonable likelihood
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`that Petitioner would prevail” in its invalidity challenge. (Lamkin Decl., ¶7.) Thus,
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`what was once a six-patent case has been cut down to just three patents – and of
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`those three, two are expired, and one is being challenged at the PTAB. On this
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`record, Philips seeks to rush the expired ’007 to appeal.
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`There is no credible reason to sever out the ’007 Patent for a separate appeal
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`while moving forward with litigation on the three remaining Patents-in-Suit.
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`Although neither the ’007 Patent nor the three remaining patents are related to each
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`other, Philips is accusing largely the same Garmin products, with the same
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`functionalities, across the remaining Patents-in-Suit. (Lamkin Decl., Exhs. B-C.)
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`As Philips admits, “some of those functions [accused under the non-’007 Patents]
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`may also exist in the same Garmin products that contain the accused [’007 Patent]
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 5 of 17 Page ID #:3549
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`GPS-based athletic performance feedback functionality.” (Motion, Dkt. No. 110, at
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`2:4-6.) And, Philips readily acknowledges that it asserted six patents together in this
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`single lawsuit for “judicial efficiency”. (Id. at 10:13-14.) Yet, Philips now argues
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`for piecemeal litigation and appeal of the ’007 Patent, a patent that Garmin has
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`invalidated here, in the United Kingdom, and just last week, Germany. (Lamkin
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`Decl., ¶¶8-9.) This is the opposite of judicial efficiency and serves no purpose other
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`than to seek to multiply the cost and expense of the proceedings and permit Philips
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`multiple bites at the same Garmin products. There is no legal or practical reason to
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`sever the expired ’007 Patent for purposes of appeal while simultaneously
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`proceeding with litigation on overlapping products with overlapping functionalities
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`on the remaining asserted patents. All of the issues should first be resolved by this
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`Court, from which a single appeal may be taken.
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`Conversely, if this Honorable Court finds Philips’ claim for urgency credible,
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`Garmin requests that this Court stay this matter pending said appeal of the ’007.
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`Otherwise, if Philips’ request for a Rule 54(b) appeal is granted, the Parties will be
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`litigating over the ’233 Patent here and before the PTAB, the Parties will be engaged
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`in an appeal over the invalidation of the ’007 Patent before the CAFC, and the
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`Parties will proceed here over the ’233, ’542, and the ’377 Patents even though each
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`of these patents cover the same accused products and overlapping accused
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`functionality. That would be the epitome of judicial inefficiency.
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`All of this rendered messier by the fact that Philips chose to depose Garmin’s
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 6 of 17 Page ID #:3550
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`GPS expert after Markman proceedings, impliedly understanding that said
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`deposition would undermine Philips’ argument that GPS calculations involved
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`simple “high school level math”. (See Philips’ Opening Claim Construction Brief,
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`Dkt. No. 77, at 9:9-17.) Which is exactly what happened. One of the world’s
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`foremost authorities on GPS and the first engineer at Garmin hired more than three
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`decades ago, Jay Dee Krull, testified in his deposition that the math involved in
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`using GPS to calculate athletic performance was extremely complex, thereby
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`refuting Philips’ “simple math” expert testimony. (Lamkin Decl., ¶10, Exh. A.) But
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`because Philips chose to depose Mr. Krull after this Court’s Claim Construction
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`Order, this Court did not have the opportunity to consider his testimony. Thus, if
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`Philips is allowed to proceed under Rule 54(b) to appeal two outcomes are possible:
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`(1) the CAFC could and should affirm this Court’s correct finding that the
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`specification of the ’007 contained “insufficient disclosure supporting how to
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`compute various types of ‘athletic performance feedback data.’” (Claim
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`Construction Order, at 9.) However, in the unlikely event that the CAFC reverses
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`and remands, the ’007 would proceed in a separate matter than the remaining
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`Patents-in-Suit and in that separate matter, this Court will be able to consider his
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`testimony and again, based on that testimony, invalidate the ’007. Setting that
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`patent up for a potential second appeal, all parallel to the litigation of the other
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`originally asserted Patents-in-Suit. Inefficiencies upon inefficiencies.
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`Notably, in the interest of judicial efficiency, Garmin offered to stay this case
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 7 of 17 Page ID #:3551
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`while Philips appealed the invalidity ruling on the ’007 Patent. (Lamkin Decl., ¶11.)
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`Given that the remaining ’223 and ’337 Patents are expired, and the ’233 Patent is
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`undergoing IPR review at the PTAB, a stay of the proceedings would allow for a
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`determination on, and potential narrowing of, key issues prior to further adjudication
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`by this Court. Philips declined. (Id.) Nevertheless, to the extent that the Court is
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`inclined to sever the ’007 Patent, Garmin respectfully submits that a stay of the
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`remainder of this case pending Philips’ ’007 appeal serves the interests of judicial
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`efficiency and the mandates of Rule 1. See Fed.R.Civ.P 1 (The Federal Rules of
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`Civil Procedure “should be construed, administered, and employed by the court and
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`the parties to secure the just, speedy, and inexpensive determination of every action
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`and proceeding.”)
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`In Garmin’s view, the best course is to stay this matter in its (remaining)
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`entirety, grant Philips’ request for a Rule 54(b) appeal, and lift the stay on this
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`matter when the PTAB has adjudicated the ’233 IPR and the CAFC rules on Philips’
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`Rule 54(b) appeal, whether it remands or affirms. That is the most efficient path
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`forward, the path warranted by common sense, caselaw, and Rule 1.
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`Finally, it’s important to note that the entirety of Philips’ Motion consists of
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`attorney argument. Aside from citing the high-level descriptions of the patents in its
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`own complaint, Philips makes no effort to demonstrate that the claims of the ’007
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`are actually distinct from the claims of the remaining Patents-in-Suit. (See Motion,
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`at 2-3.)
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 8 of 17 Page ID #:3552
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`II. THE ASSERTED CLAIMS OF THE PATENTS-IN-SUIT HAVE
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`CONSIDERABLE OVERLAP
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`The asserted claims of the ’007 are drawn toward providing athletic
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`performance feedback data. (Claim Construction Order, at 9.) In its infringement
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`contentions, Philips cites the Garmin Connect smart phone application (“Garmin
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`App”) as satisfying that limitation. (Lamkin Decl., ¶¶12-14, Exhs. B-C.) Philips cites
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`the Garmin App as the accused functionality for display of exercise, health, or medical
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`data for each of the remaining Patents-in-Suit. (Id.) Philips also accuses Garmin’s
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`Livetrack feature for presenting feedback data, a feature it accused in each of the other
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`remaining Patents-in-Suit. The same for Garmin’s Alerts feature. (Id.) Other accused
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`features shared between the ’007 and the remaining Patents-in-Suit include: distance,
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`pace, heart rate, wireless, the watch GUI, and Garmin’s website. (Id.) In short, there
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`is considerable factual overlap between the ’007 Patent and the remaining Patents-in-
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`Suit.
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`Garmin disagrees with Philips’ unsupported contention: “while the same
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`Garmin products may be nominally implicated across multiple of Philips’s various
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`infringement claims, they are implicated for very different reasons concerning entirely
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`different functionalities[.]”. (Motion, at 2:6-8.) The above-cited evidence directly
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`contradicts Philips’ mere attorney argument. But even assuming arguendo that
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`Philips’ statement is accurate, it shouldn’t matter. The Parties and the Court would
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`still need to wade through evidence, expert reports, damages reports, etc. discussing
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 9 of 17 Page ID #:3553
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`each accused capability. And because the accused products are largely the same for
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`each of the remaining Patents-in-Suit, the same fact and expert witnesses would have
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`to be deposed and testify in each separate district court case, to name but one outcome
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`in separating patents into distinct matters where the technology is similar and the
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`accused products nearly identical. There is no reason to engage in expensive time-
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`consuming efforts in three separate matters: the current matter, the IPR, and a severed
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`’007 matter.
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`Further, there is overlap in the invalidity arguments and evidence. For example,
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`Garmin asserted four pieces of prior art against both the ’233 and ’007: Jacobson,
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`Marathon Man, Dynastream, and Polar Watches. Jacobson and Marathon Man are
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`particularly important. Jacobson is one of the key pieces of prior art asserted in the
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`’233 IPR. And Marathon Man is very strong art asserted against the ’007, the ’233,
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`and the ’377. Further the Quy ’191 Patent is cited as probable invalidating prior art
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`in the ’233 IPR and Quy ’191 is the parent patent to the asserted ’377 Patent. There
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`is bound to be overlap in the interpretation and application of those patents across the
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`IPR and this matter. Again, there is no reason to litigate this art across three separate
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`matters; judicial efficiency compels the opposite result.
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`III. THE INSTITUTED ’233 IPR FURTHER WARRANTS A STAY OF
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`THIS MATTER WHILE PHILIPS’ RULE 54(B) APPEAL IS BEING
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`HEARD
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`On October 27, 2020, the PTAB found the claims of the ’233 Patent to be likely
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 10 of 17 Page ID #:3554
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`invalid and instituted an IPR.1 The PTAB proceeding must be completed within a
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`year of institution by statute.
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`“In deciding whether to grant a stay pending IPR proceedings, courts in this
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`District have considered three factors that were originally used to consider requests
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`for stays pending IPR.” Drone v. Sz Dji Tech. Co., No. CV 19-04382-AB (AFMx),
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`2020 U.S. Dist. LEXIS 138497, at *3 (C.D. Cal. Mar. 17, 2020). “(1) whether
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`discovery is complete and whether a trial date has been set; (2) whether a stay will
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`simplify the issues in question and trial of the case; and (3) whether a stay would
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`unduly prejudice or present a clear tactical disadvantage to the nonmoving party.” Id.
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`(citations omitted). “While these three factors are important, ultimately, the totality of
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`the circumstances governs.” Id. (citations omitted).
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`Here, factor one would ordinarily favor Philips: discovery is nearly complete
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`and the matter is set for trial on July 27, 2021.2 But currently the Central District has
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`suspended civil jury trials during the Covid-19 pandemic and with the current rise in
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`Covid-19 cases, a trial in July of 2021 appears unlikely. More importantly, the PTAB
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`will have to decide the ’233 IPR by October 27, 2021, a mere three months to the day
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`1 Fitbit also filed an IPR against the ’377. The PTAB denied institution, not under
`the merits but the administrative, and controversial, Fitniv case. See Apple Inc. v.
`Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential).
`Regardless, the art cited by Fitbit does not include Garmin’s strong prior art
`discussed herein.
`2 Discovery is nearly complete as the Parties are working together amicably to
`complete some discovery not completed before the close of fact discovery.
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`Opp. to Rule 54(b) Motion
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`from the current trial date. Given the rate of invalidity at the PTAB for instituted IPRs
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`(63%), a trial as to the ’233 three months before final decision is a waste of judicial
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`resources.3 This factor slightly to moderately favors a stay.
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`Under factor two, Garmin believes it has demonstrated there to be substantial
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`factual and legal overlap between the remaining patents (the ’233, ’377, and ’542
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`Patents) and the invalidated ’007 Patent. This factor weighs in favor of staying the
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`entire case during the pendency of the ’233 IPR and Philips' Rule 54(b) appeal of the
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`’007 Patent.
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`Under factor three, there is no evidence that a stay would prejudice Philips or
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`provide a clear tactical advantage to Garmin. Philips did not seek a preliminary
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`injunction and thus has failed to argue harm from Garmin’s continued sale of the
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`Accused Products. The asserted ’377 and ’233 have expired (as has the ’007). Garmin
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`is not aware of any prejudice that can be rationally attributed to a stay. See, e.g.,
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`Drone v. Sz Dji Tech. Co., No. CV 19-04382-AB (AFMx), 2020 U.S. Dist. LEXIS
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`138497, at *9 (C.D. Cal. Mar. 17, 2020) (“delay alone does not constitute prejudice”).
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`This factor weighs in favor of a stay.
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`Under the totality of the circumstances, each of the claims of the remaining
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`Patents-in-Suit have considerable factual and legal overlap. Philips believes it
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`important that it be permitted to immediately appeal this Court’s invalidation of the
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`3 Lamkin Decl., ¶15, Exh. E.
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`Opp. to Rule 54(b) Motion
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`11
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 12 of 17 Page ID #:3556
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`’007 Patent. As such, the most efficient path forward is to stay this matter and allow
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`Philips’ appeal of the ’007 to proceed. By the time Philips’ appeal is resolved, the
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`IPR will also be resolved and the Parties and this Court can move forward with any
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`surviving Philips patents.
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`Also, under the totality of the circumstances, Philips chose to depose
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`Garmin’s GPS expert after the issuance of this Court’s Markman Order. As
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`noted, Jay Dee Krull is a renowned authority on GPS and the inventor of some of
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`the original GPS technology employed in Garmin’s fitness products. Philips spent
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`the great bulk of Mr. Krull’s deposition asking him whether “simple high school
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`math” could provide the requisite algorithm for the ’007 Patent’s means-plus-
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`function claims invalidated by this Court. Mr. Krull was adamant that Philips simple
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`math argument was factually incorrect. (Lamkin Decl., Exh. A.) Garmin did not
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`present expert testimony on this issue during the Markman because the law is
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`clear that expert knowledge cannot supply the missing algorithm. (See Garmin
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`Responsive Claim Construction Brief, Dkt. No. 79, at 4:20-5:3.) But Philips took
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`the opposite position during Markman briefing and will assuredly take the same
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`position before the CAFC. (See Motion, at 4:25-28.) Thus, in the unlikely event of
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`remand, Mr. Krull’s testimony will be placed before this Court. As such, judicially
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`efficiency would be served in having the matter stayed while the CAFC decides the
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`fate of the ’007. If the CAFC remands, this Court may adjudicate the effect of Mr.
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`Krull’s testimony concurrent with adjudication of the other Patents-in-Suit.
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 13 of 17 Page ID #:3557
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`Finally, under the totality of the circumstances, Garmin has invalidated the
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`claims of the European counterpart of the ’007 in the United Kingdom and the claims
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`of the German ’007 Patent in Germany. Consistent with Philips’ new patent monetizer
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`business model, Philips keeps attempting to force Garmin to pay unwarranted
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`royalties on a patent repeatedly found to be invalid over Garmin’s own prior art
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`products. At some point Philips needs to stop trying to extract rents using a patent
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`repeatedly found to be invalid. Either the ’007 should be appealed now while the
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`remainder of the case is stayed, or Philips Motion should be denied, and the remaining
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`Patents-in-Suit kept together for one final resolution.
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`IV.
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`IF THIS COURT DOES NOT STAY THE ENTIRE MATTER, IT
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`SHOULD DENY PHILIPS’ RULE 54(B) MOTION
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`Curtiss-Wright sets forth the high-level two-part test for a Rule 54(b)
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`certification. See Wright Corp. v. Gen. Elec. Co., 446 U.S. 1, 4 100 S. Ct. 1460 (1980).
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`Further, in patent cases, “Federal Circuit law applies to Rule 54(b) certification
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`issues”. Nazomi Communs., Inc. v. Nokia Corp., No. C-10-04686 RMW, 2012 U.S.
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`Dist. LEXIS 181332, at *8 (N.D. Cal. Dec. 21, 2012) (citing Storage Tech. Corp. v.
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`Cisco Sys., Inc., 329 F.3d 823, 830 (Fed. Cir. 2003); State Contracting and Eng'g
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`Corp. v. Florida, 258 F.3d 1329, 1334 (Fed. Cir. 2001).
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`Garmin agrees that this Court’s Claim Construction Order is a final judgment
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`that can be certified for Rule 54(b) appeal. But the Parties diverge at step two of the
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 14 of 17 Page ID #:3558
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`Curtis-Wright formulation. i.e., that there was “no just reason for delay”.4
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`Fed.R.Civ.P 54(b); Seiko Epson Corp. v. Optoma Tech., Inc., 323 F. App'x 896, 898
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`(Fed. Cir. 2008).5
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`As noted above, the only justification Philips gives at step two is an alleged
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`“cloud” over its ability to assert the ’007 Patent, but Philips is pushing forward with
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`its infringement claims on the ’007 Patent against Fitbit in co-pending litigation in the
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`District of Massachusetts, despite this Court’s invalidation of the asserted claims of
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`the ’007 Patent. While Philips laments that “a cloud [has been] placed over its ability
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`to enforce the ’007 Patent,” Philips’ continued assertions of the ’007 in Massachusetts
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`betrays their alleged concern. There is simply no justification for subjecting Garmin
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`to repeated, duplicative proceedings merely so Philips can continue to press an
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`invalidated patent. (See Motion, at 11:9-11, 24-25.) And it is certainly not “sound
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`reason to justify departure from the general rule that all issues decided by the district
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`4 It is unclear why Philips spent much of its Motion explaining the difference
`between Rule 54(b) and Section 1292. Even its statement that “certification” should
`not apply to Rule 54(b) appears inconsistent with the law; SCOTUS uses the term
`“certification” dozens of times in the seminal Curtis-Wright case. See, e.g., Curtiss-
`Wright Corp. v. Gen. Elec. Co., 446 U.S. 1, 4 100 S. Ct. 1460 (1980) (“Curtiss-
`Wright then moved for a certification of the District Court's orders as final
`judgments under Federal Rule of Civil Procedure 54 (b).”) Regardless, Garmin
`follows the caselaw governing the application of Rule 54(b) not Section 1292 herein.
`5 Garmin disagrees with Philips that there are no time limits to bringing a Rule 54(b)
`Motion. See, e.g., Noland v. Va. Ins. Reciprocal, 224 W. Va. 372, 377 (W. Va.
`September 24, 2009). But Garmin does not take issue with the timeliness of Philips’
`Motion herein.
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 15 of 17 Page ID #:3559
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`court should be resolved in a single appeal of a final judgment.” See iLOR, LLC v.
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`Google, Inc., 550 F.3d 1067, 1072 (Fed. Cir. 2008).
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`Further, the only case cited by Philips at step two, 23andMe, actually counsels
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`against Philips’ Motion. The claims in that case were the invalidated patent claims
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`and “factually and legally distinct [] false/misleading advertising claims and the
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`declaratory judgment trademark claims.” 23andMe, Inc. v. Ancestry.com DNA, LLC,
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`No. 18-cv-02791-EMC, 2018 U.S. Dist. LEXIS 188327, at *6 (N.D. Cal. Nov. 2,
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`2018). This case is materially different as all of the claims are patent claims, covering
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`the same accused products with substantial factual and legal overlap.6
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`Philips itself admitted that it brought the Patents-in-Suit together in this action
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`“to increase judicial efficiency”. (Motion, at 10:13-14.) Garmin agrees; the Patents-
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`in-Suit belong in the same matter. Thus, either this matter should be stayed while
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`Philips pursues its Rule 54(b) appeal or Philips’ Motion should be denied.
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`V. GARMIN MET ITS MEET AND CONFER OBLIGATION
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`Philips represents that the only basis provided by Garmin in opposing Philips’
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`Motion during the Parties’ meet and confer was that the ’007 Patent had expired.
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`(Motion, at 12:2-5.) That representation is not accurate. During the Parties’
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`telephonic meet and confer, the undersigned stated that her client would likely oppose
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`6 The only asserted patent that covered distinct products was the ’192, which has
`been dropped by Philips.
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 16 of 17 Page ID #:3560
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`given the substantial factual overlap between the Patents. (Lamkin Decl., ¶11.) The
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`undersigned followed up with an email stating that she did not believe the Rule 54(b)
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`standard could be met “especially for an expired patent”. (Id.) Philips apparently
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`concluded from that email that Garmin had abandoned its position that the Patents-in-
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`Suit contained substantial overlap. The undersigned has since discussed Philips’
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`representations to this Court and is satisfied that Philips was operating under a good
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`faith misunderstanding. (Id.) The undersigned also discussed with Philips staying
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`the remainder of the case pending a Rule 54(b) appeal but Philips said it would oppose
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`that suggestion. (Id.)
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`VI. CONCLUSION
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`Philips is running around the world asserting and losing patents in a scattershot
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`effort to monetize weak, expired patents. Philips’ attempt to multiple proceedings is
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`plainly a waste of the Courts’ and Parties’ resources. Possibly by design, possibly in
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`an attempt to extract monies through sheer financial and resource exhaustion. But
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`that’s not how this is supposed to be done; it’s certainly not what is contemplated by
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`the Federal Rules’ prohibition against piecemeal litigation.
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`Philips’ Amended Complaint asserted six patents against Garmin. Since then,
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`one patent has been invalidated (’007), Philips canceled the claims of one patent
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`(’958), Philips dropped one patent (’192) and an IPR has been instituted over another
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`(the ’233). Garmin has invalidated the ’007 in three separate countries based on
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`Garmin’s own prior art products. The ’233, ’542, and ’377 remain before this Court.
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`Opp. to Rule 54(b) Motion
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`Case 2:19-cv-06301-AB-KS Document 113 Filed 11/20/20 Page 17 of 17 Page ID #:3561
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`In light of Philips’ request for Rule 54(b) certification and in light of the institution of
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`an IPR over the claims of the ’233, Garmin believes the remaining three patents should
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`be stayed pending the outcome of Philips’ appeal and the IPR. Then any patents
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`remaining among the original six can proceed in a single action. In the alternative,
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`Garmin asks that Philips’ Motion be denied with this matter proceeding to the merits.
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`At the end of this litigation, Philips (or Garmin) can appeal its losses in the entire
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`matter in one instance.
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`November 20, 2020
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`Respectfully submitted
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`_________________________
`Rachael D. Lamkin
`Attorney for Defendants,
`Counterclaimants
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`CERTIFICATE OF SERVICE
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`On this date, November 20, 2020, Defendants served the following document
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`upon Plaintiff via electronic mail.
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`DEFENDANTS’ OPPOSITION TO PLAINTIFF’S RULE 54(B MOTION
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`___________________
`Rachael D. Lamkin
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`Opp. to Rule 54(b) Motion
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