Case 2:19-cv-06301-AB-KS Document 116 Filed 12/04/20 Page 1 of 19 Page ID #:3625
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`JEAN-PAUL CIARDULLO, CA Bar No. 284170
` jciardullo@foley.com
`FOLEY & LARDNER LLP
`555 South Flower Street, Suite 3300
`Los Angeles, CA 90071
`Telephone: 213-972-4500
`Facsimile: 213-486-0065
`
`ELEY O. THOMPSON (pro hac vice)
` ethompson@foley.com
`FOLEY & LARDNER LLP
`321 N. Clark Street, Suite 2800
`Chicago, IL 60654-5313
`Telephone: 312-832-4359
`Facsimile: 312-83204700
`
`RUBEN J. RODRIGUES (pro hac vice)
`rrodrigues@foley.com
`LUCAS I. SILVA (pro hac vice)
`lsilva@foley.com
`JOHN W. CUSTER (pro hac vice)
`jcuster@foley.com
`FOLEY & LARDNER LLP
`111 Huntington Avenue, Suite 2500
`Boston, MA 02199-7610
`Telephone: (617) 342-4000
`Facsimile: (617) 342-4001
`
`Attorneys for Plaintiff
`Philips North America LLC
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`
` Case No. 2:19-cv-06301-AB-KS
`PHILIPS NORTH AMERICA LLC’s
`REPLY IN SUPPORT OF ITS
`MOTION UNDER RULE 54(b) TO
`ENTER FINAL JUDGMENT AS TO
`COUNT I FOR INFRINGEMENT OF
`U.S. PATENT NO. 6,013,007
`
`Date:
`Time:
`Crtrm:
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`Philips North America LLC,
`
`
`
`
`Plaintiff,
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`
`vs.
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`
`Garmin International, Inc.
`Garmin USA, Inc. and Garmin Ltd.,
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`
`
`
`Defendants.
`
`December 18, 2020
`10:00AM
`7B (350 West First Street)
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`Case 2:19-cv-06301-AB-KS Document 116 Filed 12/04/20 Page 2 of 19 Page ID #:3626
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`I. 
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`II. 
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`TABLE OF CONTENTS
`GARMIN INTERJECTS IRRELEVANT NEW ARGUMENTS ............................ 1 
`A. 
`The ’233 Patent IPR ........................................................................................ 1 
`B. 
`The European Proceedings .............................................................................. 1 
`GARMIN FAILS TO PRESENT ANY LEGALLY COGNIZABLE
`ARGUMENT FOR WHY THE APPEAL OF THE ’007 PATENT
`SHOULD BE DELAYED ......................................................................................... 2 
`A. 
`Philips’s Motion Is Not “Attorney Argument” ............................................... 2 
`B. 
`That Certain Garmin Products Are Accused Of Infringing Different
`Patents For Different Reasons Does Not Affect The Rule 54(b)
`Analysis ........................................................................................................... 2 
`No “Judicial Efficiency” Is Realized By Delaying Appeal ............................ 5 
`There Is No Risk Of Piecemeal Appeals, Which Is What Matters ................. 7 
`There Is No Just Reason For Delay ............................................................... 10 
`1. 
`Philips Is Prejudiced By Needless Delay ............................................ 10 
`2. 
`Garmin Is Not Prejudiced By An Immediate Appeal ......................... 10 
`The Court Would Set An Unfortunate Precedent If Rule 54(b)
`Judgment Were Not Entered In As Straightforward A Case As This ........... 11 
`III.  A STAY PENDING THE ’233 PATENT IPR IS NOT APPROPRIATE .............. 11 
`A. 
`The Case Is Already Far Along ..................................................................... 11 
`B. 
`There Is No Basis To Stay As To The ’377 And ’542 Patents, Which
`Also Weighs In Favor Of No Stay At All ..................................................... 12 
`1. 
`The ’377 And ’542 Patents Do Not Overlap With The ’233
`Patent ................................................................................................... 12 
`The Case Should Proceed On All Three Patents ................................ 13 
`Even If The Case Were Stayed As To The ’233 Patent, It
`Should Continue On The ’377 And ’542 Patents ............................... 14 
`IV.  CONCLUSION ........................................................................................................ 15 
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`C. 
`D. 
`E. 
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`F. 
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`2. 
`3. 
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`Case 2:19-cv-06301-AB-KS Document 116 Filed 12/04/20 Page 3 of 19 Page ID #:3627
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Cox Communs., Inc. v. Sprint Communs. Co. L.P.,
`No. 12-487-SLR, 2015 U.S. Dist. LEXIS 113522 (D. Del. Aug. 27, 2015) .................. 9
`Curtiss-Wright Corp. v. General Elec. Co.,
`446 U.S. 1 (1980) ........................................................................................................ 7, 9
`Dane Technologies, Inc. v. Gatekeeper Systems, Inc.,
`2013 U.S. Dist. LEXIS 117718, 2013 WL 4483355 at *1-3 (D. Minn.
`2013) ............................................................................................................................. 13
`Davol, Inc. v. Atrium Medical Corp.,
`2013 U.S. Dist. LEXIS 84533, 2013 WL 3013343 at *2-6 (D. Del. 2013) ................. 13
`Drone v. Sz Dji Tech. Co.,
`No. CV 19-04382-AB, 2020 U.S. Dist. LEXIS 138497 (C.D. Cal. Mar.
`17, 2020) ....................................................................................................................... 11
`Hewlett-Packard Co. v. ServiceNow, Inc.,
`No. 14-cv-00570-BLF, 2015 U.S. Dist. LEXIS 139383 (N.D. Cal. Oct.
`13, 2015) ....................................................................................................................... 14
`ImageCube LLC v. Boeing Co.,
`No. 04-cv-7587, 2010 U.S. Dist. LEXIS 5252 (N.D. Ill. Jan. 22, 2010) ................... 6, 7
`Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
`730 F.2d 1452 (Fed. Cir. 1984) ...................................................................................... 2
`Medtronic, Inc. v. Daig Corp.,
`789 F.2d 903 (Fed. Cir. 1986) ........................................................................................ 2
`Parity Networks, LLC v. Juniper Networks, Inc.,
`No. 18-cv-06452-JSW, 2019 U.S. Dist. LEXIS 231122 (N.D. Cal. July 3,
`2019) ............................................................................................................................. 14
`Pentair Water Pool and Spa, Inc. v. Hayward Indus., Inc.,
`2012 U.S. Dist. LEXIS 178630, 2012 WL 6608619 at *3 (E.D.N.C.
`December 18, 2012) ...................................................................................................... 14
`
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`RR Donnelley & Sons Co. v. Xerox Corp.,
`No. 12-cv-6198, 2013 U.S. Dist. LEXIS 176620 (N.D. Ill. Dec. 16, 2013) ................ 13
`SCVNGR, Inc. v. eCharge Licensing, LLC,
`No. 13-12418-DJC, 2014 U.S. Dist. LEXIS 135408 (D. Mass. Sep. 25,
`2014) ............................................................................................................................. 13
`SZ DJI Tech. Co. v. Yuneec Int’l Co.,
`No. CV 16-0595-BRO, 2016 U.S. Dist. LEXIS 187770 (C.D. Cal. Dec.
`5, 2016) ......................................................................................................................... 13
`
`W.L. Gore & Associates v. International Medical Prosthetics Research
`Associates, Inc.,
`975 F.2d 858 (Fed. Cir. 1992) ........................................................................................ 7
`Waddington N. Am., Inc. v. Sabert Corp.,
`No. 09-4883 (GEB), 2011 WL 3444150 (D.N.J. Aug. 5, 2011) .................................... 2
`Rules
`Fed. R. Civ. P. 54(b) ...................................................................... 1, 3, 5, 6, 7, 9, 10, 11, 15
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`Plaintiff Philips North America LLC (“Philips”) hereby replies to Garmin International,
`Inc. and Garmin Ltd.’s (collectively “Garmin”) Opposition (Dkt. 113) to Philips’s Motion under
`Fed. R. Civ. P. 54(b) (Dkt. 110, “Motion”) for the Court to enter final judgment on Count I of
`Philips’s Amended Complaint concerning U.S. Patent No. 6,013,007 (“’007 Patent”).
`I.
`GARMIN INTERJECTS IRRELEVANT NEW ARGUMENTS
`A. The ’233 Patent IPR
`The institution of the IPR on the ’233 Patent plays a prominent role in Garmin’s
`Opposition, though notably was not discussed by the parties with respect to the Rule 54(b)
`Motion for the simple reason that the IPR was not instituted until two weeks after the parties
`had met and conferred on the present Motion. Nevertheless, Philips has no procedural objection
`to Garmin’s arguments concerning the ’233 Patent IPR presented in the Opposition. Philips
`does believe, however, that it bears clarification that Garmin never sought an IPR on any of the
`other patents still in dispute, i.e., the ’007, ’377, and ’542 Patents. (See attached Ciardullo
`Declaration, ¶ 2.) Garmin joined with Fitbit on the IPR petition for the’233 Patent, but tellingly
`declined to join when Fitbit also pursued an IPR on the ’377 Patent, which the Patent Office
`subsequently declined to institute. (Id.) If Garmin believed it had some other compelling basis
`to invalidate the ’377 Patent beyond what Fitbit argued, Garmin could have pursued its own
`IPR, but chose not to. The validity of the patent now having been confirmed by the Patent
`Office, there is no basis to delay trial.
`In any event, as discussed infra, Garmin has not demonstrated that the ’233 Patent IPR
`has any bearing on how the Motion should be decided, nor has Garmin shown that it warrants a
`stay of any proceedings.
`B.
`The European Proceedings
`Garmin argues that “Garmin has invalidated the claims of the European counterpart of
`the ’007 in the United Kingdom and the claims of the German ’007 Patent in Germany.” (Opp.,
`p. 13.) As an initial matter, this is not entirely accurate: the claims of the European counterparts
`were in fact upheld as valid in amended form, and the UK and German courts disagreed in their
`reasoning. But more importantly, happenings in Europe should not be of any import to the
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`present case or the present Motion. Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 907-08 (Fed.
`Cir. 1986) (characterizing as “specious” the defendant’s argument that the Court should “adopt
`the conclusion of a German tribunal holding the … German counterpart patent obvious” and
`noting that “[t]he patent laws of the United States are the laws governing a determination of
`obviousness/nonobviousness of a United States patent in a federal court.”); Lindemann
`Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1458 n.2 (Fed. Cir. 1984)
`(finding it “meaningless” as to the issue of invalidity in the United States the fact that foreign
`counsel in a foreign counterpart allegedly conceded that prior art anticipated the foreign
`counterpart’s claims). As one judge colorfully put it, “a [f]oreign proceeding is not going to
`invalidate a U.S. patent, end of story.” Waddington N. Am., Inc. v. Sabert Corp., No. 09-4883
`(GEB), 2011 WL 3444150 at *7 (D.N.J. Aug. 5, 2011) (emphasis added).
`II. GARMIN FAILS TO PRESENT ANY LEGALLY COGNIZABLE ARGUMENT
`FOR WHY THE APPEAL OF THE ’007 PATENT SHOULD BE DELAYED
`A.
`Philips’s Motion Is Not “Attorney Argument”
`As an initial matter, Philips’s Motion does not consist of “attorney argument.” (Opp., p.
`7.) Rather, Philips’s Motion walks through the patents themselves (Motion, pp. 1-3), which on
`their face are drawn to distinctly different technical subject matter, and constitute the best and
`most objective evidence that the ’007 Patent claims are severable. Furthermore, as Garmin notes
`(Lamkin Dec. ¶ 11), Philips had understood based on Garmin’s written follow-up to the meet
`and confer that Garmin would not be disputing that the ’007 Patent claims were severable, but
`rather was only taking the position that there was no need to presently appeal invalidation of an
`expired patent. Thus, Philips did not understand there to be any need to spell out the severability
`of the issues in more exhaustive detail. In any event, the Motion already demonstrates that the
`claims are severable, and that there is no just reason for delay. The arguments below respond
`to those specifically raised in the Opposition.
`B.
`That Certain Garmin Products Are Accused Of Infringing Different
`Patents For Different Reasons Does Not Affect The Rule 54(b) Analysis
`As is evident from the face of the asserted patents themselves, the ’007 Patent is directed
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`to a GPS performance feedback functionality that is simply not at issue in any of the other
`patents, which concern entirely different kinds of functionalities. As correctly argued in the
`Motion, the ’007 Patent could have been asserted in a parallel lawsuit in a different district and
`there would have been no risk of inconsistent judgments with the litigation of the balance of the
`patents in this Court, which is a compelling litmus test for the application of Rule 54(b). Garmin
`ultimately does nothing in its Opposition to refute this, despite it being conspicuously raised in
`the Motion.
`As shown in the Motion with reference to the patents themselves (Motion, p. 1-3), the
`patents claim non-overlapping technologies, and are asserted against non-overlapping
`functionalities of Garmin products:
`(a) The ’007 Patent covers detailed improvements for using GPS waypoints
`to provide a user with reports about, e.g., pace. The Garmin functionalities
`accused of infringement are those that provide such GPS-waypoint based
`feedback information.
`(b) The ’233 Patent is directed to an improved system for governing
`securely transmitted information (including physiological parameters) between
`devices. The Garmin functionalities accused of infringement relate generally to
`how the password/login aspects of the Garmin Connect App govern secure
`transmission of information from a device.
`(c) The ’377 Patent is more narrowly directed to improvements relating to
`a download application on an internet-enabled wireless phone used to gather
`exercise related information, sending that information to a server, determining a
`calculated response based on said exercise information at the server, and
`displaying that response on the phone. The Garmin functionalities accused of
`infringement include the Garmin Insights and Garmin Coach programs to the
`extent that they utilize calculations made at the server based on exercise-related
`data from a user’s wireless phone.
`(d) The ’542 Patent is directed to a method for generating warning
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`indications to a user based on undesirable physical conditions based on analyzing
`one or more vital parameters. The Garmin functionalities accused of infringement
`include the Garmin Training Status feature which provides warnings about
`undesirable physical conditions.
`These patents were invented by entirely different people, and the technology they claim
`is unrelated apart from the fact that they broadly concern electronic monitoring of the activities
`of a person.
`Nowhere in its Opposition does Garmin truly dispute the foregoing conclusions, because
`Garmin cannot dispute them: they are based on simple objective facts. Rather, Garmin merely
`emphasizes that there is an overlap in the products that contain the differing functionalities
`claimed by the patents. Garmin’s purported evidence against severability consists of an
`unremarkable listing of products from Philips’s Infringement Contentions (Dkt. 113-3) that
`demonstrates the fact – undisputed by Philips – that a number of the same Garmin products are
`host to more than one of the accused infringing functionalities. However, this has no more
`significance than if Philips had one patent directed to a car radio, and anther patent directed to a
`car climate control system, and asserted both patents against the same car. The happenstance of
`the same product containing two different and unrelated accused functionalities does not mean
`that the asserted patents themselves overlap.1
`Philips’s detailed claim charts only confirm this. For example, claim charts for the
`Garmin Fenix 5 product are attached hereto as Exhibits 1-4, and clearly demonstrate that the
`functionalities accused within that product are distinctly different for each asserted
`patent.2 Philips is breaking down infringement of the patents along lines of accused
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`1 Philips never “admitted” otherwise in its Motion. Garmin quotes Philips as saying
`“some of those functions [accused under the non-’007 Patents] may also exist in the same
`Garmin products that contain the accused [’007 Patent] GPS-based athletic performance
`feedback functionality.” (Opp., p. 4-5.) While framed as an “admission,” this is simply an
`accurate and unremarkable statement of Philips’s position, i.e., that even if the products
`containing the accused functionalities map overlap, the patents themselves do not.
`2 Claim 24 of the ’233 Patent nominally references a GPS feature but this is of no import
`for two reasons: (1) the claimed element is not a GPS waypoint-based feedback mechanism
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`functionalities of products – not the products themselves. The ’007 Patent claim charts are
`directed the GPS waypoints performance metrics. The other claim charts are not. The accused
`functionalities do not overlap, and the causes of action are obviously severable.
`C. No “Judicial Efficiency” Is Realized By Delaying Appeal
`Contrary to Garmin’s assertions, there is no “judicial efficiency” gained from postponing
`the appeal of the ’007 Patent indefiniteness finding until after trial of the rest of the unrelated
`patents. Regardless of whether Philips appeals the ’007 Patent now or after trial, if the Federal
`Circuit were to reverse and remand on the narrow question of the Court’s August 28, 2020
`indefiniteness ruling, then in both scenarios there would necessarily be a second follow-on
`district court proceeding regarding the ’007 Patent. If that proceeding requires calling some of
`the same knowledgeable witnesses and recitation of some of the same general background facts
`(e.g., how many units of products containing the accused functionalities were sold), then that
`will be the same no matter whether that remanded case happens sooner, or if it happens later.
`Such “duplication” is an inherent possibility any time a claim is severed on a Rule 54(b) Motion
`that could result in a follow-on remanded proceeding, and has no bearing on the analysis.
`Garmin also makes much of the deposition testimony of Mr. Krull, which is irrelevant to
`the Rule 54(b) analysis.3 Garmin argues in essence “but if there is a remand, we might have
`other arguments to make about why the ’007 Patent should be found invalid.” But of course
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`of the kind claimed in the ’007 Patent, and more importantly/simply (2) Philips will not be
`moving forward with this claim in the case (a decision that had already been reached in
`view of the claim construction order).
`3 Contrary to Garmin’s unsupported insinuations, Philips did not somehow plot to delay
`the deposition of Mr. Krull until after the Claim Construction Order as a plan to avoid his
`testimony. Rather, Philips did not depose any witnesses prior to the Claim Construction
`Order. (Ciardullo Dec., ¶ 4.) The timing of the depositions had only to do with the timing
`of events in discovery, and the fact that it is customary that depositions happen last.
`Garmin’s arguments about Mr. Krull also beg the question: if Garmin viewed his testimony
`as so critical to claim construction, then why did Garmin not submit a declaration from Mr.
`Krull as part of its claim construction briefing to the Court? Garmin has waived claim
`construction arguments based on Mr. Krull’s testimony by failing to argue those positions
`during the actual claim construction process.
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`that would be same regardless of whether Philips’s appeal happens now, or happens after trial.
`There is nothing that is going to be presented in the remainder of this case in the District Court
`that is going to have any bearing on how the Federal Circuit handles the appeal of the ’007
`Patent, which concerns only the narrow question of whether the Court’s August 28, 2020 claim
`construction ruling of indefiniteness should be upheld, and which will handled in identical
`fashion regardless of whether that appeal is taken now or taken later. To the extent Garmin is
`somehow suggesting that it will otherwise be arguing about Mr. Krull’s testimony in the present
`case going forward, that is obviously incorrect. Litigation on the ’007 Patent in this case is over.
`Even if Garmin’s arguments concerning Mr. Krull were not waived for failure to make them
`during claim construction, this Court will never consider those arguments unless and until there
`is a remand, in which case that remand will play out the same way regardless of when it happens.
`The same is also true of the purported “overlapping prior art” that Garmin cites. (Opp.,
`p. 9.) As an initial matter, Philips notes that Garmin has elected not to pursue the Marathon
`Man and Quy ’191 prior art references in this case, so it is unclear why they are raised in the
`Opposition. Secondly, there is no relevant overlap in the prior art, and Garmin’s Opposition
`fails to actually present any evidence to the contrary apart from attorney argument.4 But even
`if there were some nominal overlap, the handling of that prior art following a possible remand
`is going be identical regardless of whether a that remand happens sooner, or happens later. No
`efficiency is gained by delay – only delay is gained by delay.
`The foregoing was explained well in ImageCube LLC v. Boeing Co., No. 04-cv-7587,
`2010 U.S. Dist. LEXIS 5252 (N.D. Ill. Jan. 22, 2010). In that case, an ImageCube patent was
`found to not be infringed, and ImageCube sought entry of judgment on that patent under Rule
`54(b) so that an appeal could be taken. The Defendants protested that they still had other
`invalidity defenses and other counterclaims that might provide additional bases to dismiss the
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`4 The Jacobson reference, for example, relates to a wireless communication system –
`not a GPS waypoint-based performance feedback tool. That Garmin unilaterally tries to
`shoehorn this reference against the ’007 Patent does not make it relevant. Nor does it
`ultimately matter for purposes of the present Rule 54(b) analysis, as discussed herein.
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`patent claims beyond those already ruled upon by the court. The court correctly rejected such
`arguments:
`
`Once the Court ruled in Defendants’ favor as to one of the defenses to
`ImageCube’s infringement claim, the Court had no reason to determine
`whether the additional defenses also should be sustained, because its
`judgment in favor of Defendants and against ImageCube as to that
`claim was ‘final’… Aeromet also points to its unadjudicated
`counterclaims, which, if successful, could lead to the invalidation of
`ImageCube’s patent []. Yet, the presence of nonfrivolous counterclaims
`‘does not render a Rule 54(b) certification improper.’ Curtiss-Wright,
`446 U.S. at 9; see also W.L. Gore, 975 F.2d at 864. [] Here, the Court
`is persuaded that Defendants’ counterclaims…are separable from the
`matters as to which immediate appeal is sought. As Plaintiff points out,
`the counterclaims focus largely on prior art and the conduct of the
`inventor and his lawyers.
`Id. at *8-10, relying on Curtiss-Wright Corp. v. General Elec. Co., 446 U.S. 1, 9
`(1980) and W.L. Gore & Associates v. International Medical Prosthetics Research
`Associates, Inc., 975 F.2d 858, 863 (Fed. Cir. 1992).
`D. There Is No Risk Of Piecemeal Appeals, Which Is What Matters
`The reason that Philips took care in its Motion to distinguish a Rule 54(b) judgment from
`a Section 1292 interlocutory appeal (Motion, p. 6-9) was to demonstrate why allowing an
`immediate appeal of the present case should be routine and does not implicate the kinds of
`concerns raised by Garmin. The driving objective at issue here is to avoid unnecessary
`piecemeal appeals. So, as Philips noted in its Motion, if the Court’s claim construction order
`had merely construed the ’007 Patent claims in an unfavorable way to Philips without
`invalidating them, the absence of a final judgment would have left Section 1292 as the only
`pathway to an immediate appeal, and Garmin’s concerns about unnecessary duplication of work
`would have been a legitimate objection to a Section 1292 certification. That is because the case
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`REPLY ON RULE 54(b) MOTION
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`could otherwise have continued in the district court and the ’007 Patent might have been
`invalidated or found non-infringed on other grounds, possibly rendering the claim construction
`ruling only one of several adverse rulings that would need to be addressed at the appellate level,
`and making it a true matter of judicial efficiency to wait to join all those rulings in a single final
`judgment for a single appeal to address all of them together at once (if any appeal were to
`ultimately happen at all).
`Here, litigation of the ’007 Patent is over, so there are no forthcoming rulings on that
`patent that would have any bearing on appellate review. The proposed appeal would be limited
`to the very narrow question of whether the Court’s claim construction ruling finding the ’007
`Patent indefinite should be upheld or not. The resolution of that narrow question has no bearing
`on the rest of the case that would continue in parallel. There is no similar indefiniteness
`argument at issue with any of the other patents. Indeed, the question of indefiniteness by its
`very nature is highly patent-specific, since it asks whether the language used in a particular
`patent claim is sufficiently clear and supported within the confines of that patent.
`What might have otherwise mattered here is if a possible future determination of
`invalidity or non-infringement of one of the remaining patents would have necessarily meant
`that the ’007 Patent must also be invalid or not infringed for the same reasons. For example, if
`another of the asserted patents was a child or parent patent of the ’007 Patent with the same
`specification and similar claims directed to a GPS waypoint-based feedback system, and that
`child or parent patent were found invalid over prior art at trial, there might have been some
`potential efficiency realized in waiting for that outcome in the District Court before bringing an
`appeal on the ’007 Patent since the issues presented might have been overlapping. However,
`there is no such scenario presented in this case. Even if all the other patents were found invalid
`and not infringed, that would have no bearing on the analysis of whether the ’007 Patent is valid
`or infringed because the ’007 Patent is unrelated to the rest of the patents and is drawn to
`different technology.
`Certainly Garmin has shown no such “intertwined fates” among the asserted patents.
`Garmin tacitly admits as much in its Opposition, making only a half-hearted argument against
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`the obvious conclusion that the patents are distinct from each other, and then saying “even
`assuming arguendo that Philips’ statement [that the patents are directed to different technology]
`is accurate, it shouldn’t matter,” as a lead in to Garmin’s “judicial efficiency” arguments that
`Philips has now shown above are irrelevant. (Opp., p. 8-9.) The questions of the ’007 Patent’s
`validity and infringement stand alone from the rest of the patents, and will not be informed by
`resolution of validity and infringement of the remainder of the patents in the ongoing litigation
`in the District Court.
`As explained by the Supreme Court in Curtiss-Wright, the primary considerations of the
`district court should be “whether the claims under review were separable from the others
`remaining to be adjudicated and whether the nature of the claims already determined was such
`that no appellate court would have to decide the same issues more than once even if there were
`subsequent appeals.” 446 U.S. at 8 (and also noting at n.2 that neither factor was even
`necessarily dispositive). In the present case, both factors weigh in favor of granting the Rule
`54(b) Motion. There is no inter-relationship between the issues raised by the indefiniteness
`ruling on the ’007 Patent and the remaining issues in the case, and the ’007 Patent claims are
`otherwise clearly severable from the rest. Furthermore, now that the ’007 Patent has been
`invalidated, the appeal of that patent is going to look identical whether taken now or taken later.
`This is consistent with the reasoning of the respected patent scholar Judge Sue L. Robinson in
`her decision in Cox Communs., Inc. v. Sprint Communs. Co. L.P., No. 12-487-SLR, 2015 U.S.
`Dist. LEXIS 113522, at *5 (D. Del. Aug. 27, 2015):
`With respect to the ‘Invalidated Patents,’ I have concluded that entry of
`a Rule 54(b) judgment is an appropriate procedural tool to accomplish
`what the Federal Circuit and Congress have encouraged (if not yet
`mandated) on the trial level, that is, to reduce the costs and
`inefficiencies of patent litigation through early dispositive rulings.
`Having determined, through a discrete motion practice on an issue of
`law, that these patents are invalid by reason of indefiniteness [], it
`makes imminent sense to have the Federal Circuit review my decision
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`sooner rather than later. I believe this conclusion is consistent with the
`principles underlying Rule 54(b).
`Garmin notably fails to even acknowledge (much less distinguish) the multiple cases
`cited in Philips’s moving papers in which a Rule 54(b) judgment was allowed based on a
`severable patent claim. (See Motion, p. 9-10.) Garmin’s Opposition is also conspicuously bereft
`of any meaningful supporting case law of its own. That is because – as demonstrated by the
`Motion and above – the case law supports Philips’s position. Entering a Rule 54(b) judgment
`on the present facts should uncontroversial and “ro