Case 2:19-cv-06301-AB-KS Document 120 Filed 01/22/21 Page 1 of 10 Page ID #:3862
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`LAMKIN IP DEFENSE
`RDL@LamkinIPDefense.com
`Rachael D. Lamkin (246066)
`One Harbor Drive, Suite 300
`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
`
`Attorneys for Defendants
`Garmin International, Inc. and Garmin Ltd.
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
` Case No. 2:19-cv-06301-AB-KS
`NOTICE OF MOTION and OPPOSED
`MOTION TO MODIFY THE
`SCHEDULING ORDER UNTIL
`AFTER THE PTAB’S FINAL
`DECISION ON THE ’233 PATENT
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`Hearing: February 26, 2021
`10:00 am
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`Hon. André Birotte Jr.
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`Philips North America LLC,
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`Plaintiff,
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`vs.
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`Garmin International, Inc. and
`Garmin Ltd.,
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`Defendants.
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`Case 2:19-cv-06301-AB-KS Document 120 Filed 01/22/21 Page 2 of 10 Page ID #:3863
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`TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
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`PLEASE TAKE NOTICE that on February 26, 2021 at 10:00 AM, or as soon thereafter
`as the matter may be heard before Honorable André Birotte Jr., in Courtroom 7B of the
`United States District Court, Central District of California, located at 350 West First
`Street, Los Angeles, CA 90012, Defendant Garmin will, and hereby does, respectfully
`move pursuant to extend the trial dates until after final decision on the IPR of the asserted
`’233 Patent.
`The grounds for the Motion are set forth in the Motion below. This Motion is
`based on this Notice of Motion, the accompanying Memorandum of Points and
`Authorities, the pleadings and papers on file in this action, and on such other and
`further evidence as may properly be before this Court at the hearing on the Motion.
`This Motion is made following the requested conference of counsel on January 14,
`2021, and again on January 18, 2021, and again on January 20, 2021, and on the
`telephonic discussion on January 21, 2021. The undersigned acknowledges that this
`Motion was filed less than seven days after the telephonic conference of counsel but was
`necessitated by Philips’ delay in participating in said conference and the trial schedule,
`which currently calls for summary judgment motions prior to this motion for an extension
`in the trial schedule.
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`LAMKIN IP DEFENSE
`
`/s/ Rachael D. Lamkin
`Rachael D. Lamkin (246066)
`LAMKIN IP DEFENSE
`One Harbor Drive, Suite 304
`Sausalito, CA 94965
`RDL@LamkinIPDefense.com
`916.747.6091
`Attorney for Defendant
`Garmin USA, Inc.
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`1
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` Motion to Extend Trial Dates
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 120 Filed 01/22/21 Page 3 of 10 Page ID #:3864
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`I.
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`INTRODUCTION
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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), and
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`Philips has voluntarily withdrawn its infringement allegations as to the ’192 Patent. (Dkt.
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`No. 113-1, ¶6.) Only the ’233 Patent (expired), the ’377 Patent (expired), and the ’542
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`Patent remain at-issue. As noted by this Court in two separate orders, “each of the
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`asserted patents generally relate to monitoring a subject’s activity or health condition.
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`The patents are all utilized across the same allegedly infringing products and involve
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`electronic monitoring of athletes—facts that Plaintiffs also recognize as true.” Order on
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`Philips’ Rule 54 Motion, Dkt. No. 118, at 3 (citing Markman Order, Dkt. No. 102, at 2).
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`On October 27, 2020, the Patent Trial and Appeal Board (“PTAB”) instituted an
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`IPR challenge against all of the asserted claims of the ’233 Patent, finding a “reasonable
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`likelihood that Petitioner would prevail” in its invalidity challenge. (Dkt. No. 113-1, ¶7.)
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`The PTAB’s final decision must issue on or before a year from institution, or October 27,
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`2021. See 35 U.S.C. § 316(a). Further, in 2020, in 79% of the cases, at least some claims
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`of the instituted patents were invalidated by the PTAB. In 52% of the cases, all claims of
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`the asserted patents were invalidated. (Lamkin Decl., Exh. A) There is thus a near 80%
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`probability that at least some of the asserted claims of the ’233 patent will be invalidated
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`and a 52% chance that all asserted claims of the’233 Patent will be invalidated on or
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`before October 27, 2021.
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`Further, just a few days ago, Philips filed its response to the institution decision.
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`2
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`Motion to Extend
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 120 Filed 01/22/21 Page 4 of 10 Page ID #:3865
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`(Lamkin Decl, Exh B.) In that response, Philips took positions that if adopted by the
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`PTAB, should prompt a non-infringement determination in this case.
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`Currently, trial is set for July 27, 2021, three months to the day before the final
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`deadline for the PTAB’s decision on the validity of the asserted claims of the ’233 Patent.
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`On the data, the PTAB is highly likely to invalidate some or all of the asserted claims of
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`the ’233 Patent. And in the unlikely event that the PTAB declines to invalidate all of the
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`asserted claims of the ’233, the PTAB may side with Philips on key arguments that will
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`in fact demonstrate that the accused products do not infringe the ’233 Patent.
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`It would be a quintessential waste of judicial resources to try Philips infringement
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`case and Garmin’s invalidity defense of the ’233 on these facts. Moreover, given the
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`substantial overlap between the ’233 and the remaining two patents, judicial economy
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`warrants an extension of the case schedule until after the PTAB’s final determination on
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`October 27, 2021.
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`II.
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`LEGAL AUTHORITY
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`In deciding whether to grant a stay pending inter partes review proceedings (or, as here,
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`a mere extension), courts in this District have considered three factors that were originally used
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`to consider requests for stays pending the U.S. Patent and Trademark Office’s reexamination
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`proceedings: (1) whether discovery is complete and whether a trial date has been set; (2) whether
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`a stay will 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. Dataquill Ltd.
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`v. Tcl Commun. Tech. Holdings, No. 2:19-cv-03394-AB-PLAx, 2020 U.S. Dist. LEXIS
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`3
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`Motion to Extend
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`Case 2:19-cv-06301-AB-KS Document 120 Filed 01/22/21 Page 5 of 10 Page ID #:3866
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`122984, at *3 (C.D. Cal. Apr. 24, 2020) (citing Allergan Inc. v. Cayman Chem. Co., No. SACV
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`07-01316 JVS (RNBx), 2009 WL 8591844, at *2 (C.D. Cal. Apr. 9, 2009). While these three
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`factors are important, ultimately the totality of the circumstances governs. Id.
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`III. THE TRIAL SCHEDULE SHOULD BE EXTENDED UNTIL AFTER THE
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`PTAB’S FINAL DETERMINATION
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`A.
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`Factor One is Neutral or Slightly Weighs Against an Extension
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`“A court’s analysis of the stage of litigation focuses on whether discovery is completed,
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`and whether a trial date has been set.” SCA Hygiene Prods. Aktiebolag v. Tarzana Enters., LLC,
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`No. CV 17-04395-AB (JPRx), 2017 U.S. Dist. LEXIS 218330, at *7 (C.D. Cal. Sep. 27, 2017)
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`(citations omitted). Here, fact discovery is closed but expert discovery remains open. A trial
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`date has been set but currently all civil trials in this District are stayed during the Covid 19
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`pandemic. As such, a trial date in July seems unlikely. This factor is neutral, or possibly
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`weighing against extending the case schedule.
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`B.
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`Factor Two Weighs in Favor of an Extension
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`“With regards to IPR, some of the advantages of a stay include the fact that the record of
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`the reexamination may be entered at trial[;] that the PTO’s expertise will govern[,] thus
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`simplifying the case; that evidentiary and other issues will be further narrowed following a
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`reexamination; and that costs will be reduced.” SCA Hygiene Prods. Aktiebolag v. Tarzana
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`Enters., LLC, No. CV 17-04395-AB (JPRx), 2017 U.S. Dist. LEXIS 218330, at *10 (C.D. Cal.
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`Sep. 27, 2017) (citations omitted). Further, the Court “will benefit from the expert evaluation
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`of the issues by the Patent Office.” Id., at *12.
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`4
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`Motion to Extend
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 120 Filed 01/22/21 Page 6 of 10 Page ID #:3867
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`Across all three of the remaining patents, Philips has elected to assert twelve claims. Of
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`those twelve claims, half are from the ’233 Patent. Thus, if the PTAB invalidates the claims of
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`the ’233, half of Philips case will be eliminated.
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`There is no need to split this case into two trials in the unlikely event that the claims of
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`the ’233 survive IPR. The Parties are using the same experts across all three remaining patents,
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`and Garmin will use the same in-house witnesses for all three remaining patents. The reduction
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`in resources associated with keeping the three patents together is substantial. Thus, while the
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`’233 should without question be stayed/extended, it makes good sense to also stay/extend
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`adjudication of the remaining ’377 and ’542 Patents.
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`Finally, in its response to the PTAB’s institution, Philips has argued additional claim
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`construction positions that would render its infringement case against Garmin here impossible.
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`That is, in an attempt to avoid invalidity over strong prior art, Philips has taken the position that
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`a failed password log in that prevents all data from being sent to the device cannot meet a
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`limitation present in all asserted claims: “(c) a security mechanism governing information
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`transmitted between the first personal device and the second device.” ’233, 15:9-11.
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`Specifically, Philips argued, “Petitioners rely on Jacobsen’s ‘self-disabling means,’
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`which simply renders a device inoperative in the event a user inputs the wrong password.”
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`(Petitioner Response, Lamkin Decl., Exh. B, at 8.) “While the ‘self-disabling’ means provides
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`“security” in a general sense by disabling a device in the event that a wrong password is entered,
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`that mechanism in no way would govern information transmitted between the wrist/sensor unit
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`and the soldier unit 50 as required by claim 1.” Id., at 20. “While the claim expressly requires
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`Motion to Extend
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 120 Filed 01/22/21 Page 7 of 10 Page ID #:3868
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`‘a security mechanism governing information transmitted,’ under Petitioners’ and Dr.
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`Paradiso’s understanding of the claim, there would be no information transmitted whatsoever in
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`the event that a soldier entered the wrong password on the wrist unit or soldier unit and disabled
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`the device.” Id., at 21 (emphasis in the original).
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`That is, Philips argues that a mechanism such as the wrong password that operates to
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`block all information between the personal medical device and the second device cannot meet
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`the limitation at issue. As will be shown through expert testimony if the claims of the ’233
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`survive, Garmin’s password system works the same as Jacobson’s. Thus, if the PTAB
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`determines Jacobson is not prior art based on Philips’ arguments, its reasoning can be employed
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`by this Court to rule at summary judgment that the accused product don’t infringe.
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`The same is true for Philips’ argument, “the ’233 patent explains how it provides a system
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`with “multiple levels of prioritization, authentication of a person (task, step, process or
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`order), and confirmation via interrogation of person, device, or related monitor.” Id., at 19
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`(citing ’233 Patent, Abstract, Martin Decl., Ex. 2026, ¶¶23, 70) (emphasis by Philips). If the
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`PTAB agrees with Philips that the “security mechanism” of the asserted claims of the ’233
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`require multiples levels of access, none of the accused products infringe the claims of the ’233
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`Patent.
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`In sum, statistically the PTAB should invalidate some or all of the claims of the ’233. If
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`not, the PTAB may rely upon arguments made by Philips to distinguish the prior art. If so,
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`Garmin’s products will not infringe. Thus, regardless of the outcome of the PTAB’s final
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`determination, half of this case could be eliminated. This strongly favors a stay/extension.
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`Motion to Extend
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 120 Filed 01/22/21 Page 8 of 10 Page ID #:3869
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`C.
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`Prong Three Favors an Extension
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`At prong three, the Court analyzes whether a stay/extension would unduly prejudice or
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`present a clear tactical disadvantage to the non-moving party. SCA Hygiene Prods., at *12
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`(citations omitted). The delay inherent to the reexamination process does not constitute, by
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`itself, undue prejudice. Id. In analyzing this factor, courts have looked to considerations such
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`as the timing of the requests for reexamination and a stay, the status of the reexamination
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`proceedings, and the relationship of the parties. Id., at *13.
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`Philips first accused Garmin of infringing the ’233 Patent in February 2016. (FAC, Dkt.
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`No. 45, ¶43.) Garmin disagreed, providing evidence and reasoning in support of its non-
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`infringement and invalidity positions. Philips waited more than three years to file the instant
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`litigation. During this litigation, Philips has requested and the Parties have jointly sought
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`multiple informal and formal requests for extensions in the case schedule. See, e.g., Dkt. Nos.
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`27, 30, 89, 103. Philips is demonstrably not prejudiced by extensions in the trial schedule. See
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`SCA Hygiene Prods., at *14 (“Seeing as how SCA delayed in bringing this action in the first
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`place, its arguments of prejudice are unpersuasive.”)
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`D.
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`Totality of the Circumstances Favors a Stay
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`Philips has not been in a rush to get to trial. Further, half of Philips’ original case has
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`already been eliminated and the instituted IPR is highly likely to halve Philips’ case yet again.
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`A stay/extension would likely benefit the parties and the Court by at least simplifying an issue
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`or issues in this case.
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`IV. CONCLUSION
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`Motion to Extend
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`Case 2:19-cv-06301-AB-KS Document 120 Filed 01/22/21 Page 9 of 10 Page ID #:3870
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`Garmin respectfully asks that this Honorable Court extend the trial schedule until after
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`the PTAB’s Final Determination, as set forth in the proposed order filed with this Motion.
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`Respectfully submitted, Dated: January 22, 2021
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`LAMKIN IP DEFENSE
`
`/s/ Rachael D. Lamkin
`Rachael D. Lamkin (246066)
`LAMKIN IP DEFENSE
`One Harbor Drive, Suite 304
`Sausalito, CA 94965
`RDL@LamkinIPDefense.com
`916.747.6091
`Attorney for Defendant
`Garmin USA, Inc.
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`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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`Motion to Extend
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`Case 2:19-cv-06301-AB-KS Document 120 Filed 01/22/21 Page 10 of 10 Page ID #:3871
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`CERTIFICATE OF SERVICE
`On this date, January 22, 2021, I did personally serve upon counsel for Philips via
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`this Court’s ECF system the following documents:
`Notice of Motion
`Motion
`Lamkin Declaration & Supporting Documents
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`/s/ Rachael D. Lamkin
`Rachael D. Lamkin (246066)
`LAMKIN IP DEFENSE
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`Motion to Extend
`CASE NO. 2:19-cv-06301-AB-KS
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