Case 2:19-cv-06301-AB-KS Document 123 Filed 02/05/21 Page 1 of 11 Page ID #:4007
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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
`
`
`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
`OPPOSITION TO DEFENDANTS’
`OPPOSED MOTION TO MODIFY
`THE SCHEDULING ORDER UNTIL
`AFTER THE PTAB’S FINAL
`DECISION ON THE ’233 PATENT
`Date:
`February 26, 2021
`Time:
`10:00 am
`Hon. André Birotte Jr.
`
`Defendants.
`
`
`Plaintiff,
`
`vs.
`Garmin International, Inc. and Garmin
`Ltd.,
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`Philips’s Opposition to Defendants’ Notice of Motion to Modify the Scheduling Order
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`Case 2:19-cv-06301-AB-KS Document 123 Filed 02/05/21 Page 2 of 11 Page ID #:4008
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`B. 
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`C. 
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`TABLE OF CONTENTS
`INTRODUCTION .................................................................................................. 1 
`I. 
`LEGAL STANDARD ............................................................................................ 1 
`II. 
`III.  ALL FACTORS WEIGH AGAINST DELAYING THIS CASE ......................... 2 
`A.  AN IMMINENT TRIAL DATE AND NEARLY COMPLETE
`EXPERT DISCOVERY WEIGHS AGAINST DELAY ............................. 2 
`A STAY WILL NOT SIMPLIFY THE ISSUES ......................................... 3 
`1. 
`Stays are disfavored when only a subset of the asserted
`patents are subject to IPR ................................................................ 3 
`The ’377 Patent and the ’542 Patent Claim Subject
`Matter Separate and Apart from the ’233 Patent ............................ 4 
`The prior art asserted by Garmin in the IPR is only a
`subset of the prior art relied on by Garmin in litigation.................. 5 
`Philips position in the IPR against the ’233 Patent does
`not support a finding of non-infringement and does not
`simplify the issues ........................................................................... 6 
`FURTHER DELAY IS PREJUDICIAL TO PHILIPS AND WEIGHS
`AGAINST A STAY ..................................................................................... 7 
`IV.  CONCLUSION ....................................................................................................... 7 
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`2. 
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`3. 
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`4. 
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Asetek Holdings, Inc. v. Cooler Master Co.,
`2014 WL 1350813 (N.D. Cal. Apr. 3, 2014)……. ......................................................... 2
`Drone v. Sz Dji Tech. Co.,
`No. CV 19-04382-AB, 2020 U.S. Dist. LEXIS 138497 (C.D. Cal. Mar. 17, 2020) ...... 1
`RR Donnelley & Sons Co. v. Xerox Corp.,
`No. 12-cv-6198, 2013 U.S. Dist. LEXIS 176620 (N.D. Ill. Dec. 16, 2013) .................. 4
`SCVNGR, Inc. v. eCharge Licensing, LLC,
`No. 13-12418-DJC, 2014 U.S. Dist. LEXIS 135408 (D. Mass. Sep. 25, 2014) ............ 3
`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) ...... 3
`Trusted Knight Corp. v. IBM,
`No. 19-cv-01206-EMC, 2020 U.S. Dist. LEXIS 158218 (N.D. Cal. Aug. 31, 2020) .... 4
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`Plaintiff Philips North America LLC (“Philips”) hereby responds to Garmin
`International, Inc.’s and Garmin Ltd.’s (collectively “Garmin”) Opposed Motion to Modify
`the Scheduling Order Until After the PTAB’s Final Decision on the ’233 Patent. (Dkt. 120.)
`I.
`INTRODUCTION
`Three Philips patents remain asserted in this case, the ’377 Patent, the ’542 Patent,
`and the ’233 Patent but Garmin only filed an IPR petition against the ’233 Patent. The ’377
`patent was the subject of an IPR petition filed by another party, Fitbit, but was rejected
`with the Board finding that the “merits are not particularly strong” and expressed “doubt
`on whether Petitioner has demonstrated a reasonable likelihood of prevailing on these
`grounds.” See Ex. A at 19. Generally courts are reluctant to issue stays in instances such
`as here where only a subset of the asserted patents is subject to an IPR. Meanwhile, this
`case has progressed apace, the Court has issued a claim construction order, fact discovery
`closed months ago, opening expert reports exchanged, and rebuttal expert reports are set to
`be exchanged on the day of this filing. The parties and Court have expended significant
`resources to advance this case to trial, which is scheduled for July. There is no advantage
`to delaying the case until the PTAB enters its decision on the ’233 Patent, especially
`because the PTAB’s decision is appealable, and thus a final decision on the ’233 Patent is
`not a mere three months after the current trial date, but rather likely more than a year
`afterwards. The circumstances in this case simply do not warrant any further delay and
`Garmin’s motion should be denied.
`II. LEGAL STANDARD
`When determining whether a stay is warranted, courts in this district consider: “(1)
`whether discovery is complete and whether a trial date has been set; (2) whether a stay will
`simplify the issues in question and trial of the case; and (3) whether a stay would unduly
`prejudice or present a clear tactical disadvantage to the nonmoving party.” Drone v. Sz Dji
`Tech. Co., No. CV 19-04382-AB (AFMx), 2020 U.S. Dist. LEXIS 138497, at *3 (C.D.
`Cal. Mar. 17, 2020).
`In considering the “undue prejudice” factor, courts analyze: the timing of the IPR
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`request; the timing of the request for stay; the status of the IPR proceedings; and the
`relationship of the parties. Asetek Holdings, Inc. v. Cooler Master Co., 2014 WL 1350813,
`at *4 (N.D. Cal. Apr. 3, 2014).
`III. ALL FACTORS WEIGH AGAINST DELAYING THIS CASE
`All three factors weigh against delaying trial until after the PTAB enters its decision
`on the patentability of the ’233 patent, and more than a year before any appeal is resolved.
`First, the Court set a trial date for July 27, 2021, less than six months from now and expert
`discovery will be completed this month. Second, Garmin overstates potential simplification
`of the issues on several bases. Indeed, the opportunity for simplification is limited because:
` only one of the three asserted patents is subject to an IPR proceeding, there is
`no justification whatsoever to delay proceeding on the ’377 and ’542 patents;
` except for one prior art reference (Jacobsen) the prior art relied on by Garmin
`to invalidate the ’233 patent in this case is completely different from that
`asserted in the IPR. Therefore any insights the PTAB may have on the prior
`art would be limited at best; and
` Philips has not taken any inconsistent positions with respect to infringement
`in this case and validity in the IPR against the ’233 patent.
`Finally, Garmin’s delay in filing the IPR, over eight months after the complaint was filed,
`and the timing of the request for the stay, weigh in favor of undue prejudice to Philips.
`A. An Imminent Trial Date and Nearly Complete Expert Discovery
`Weighs Against Delay
`Trial is set for July 27, 2021, less than six months from now. Fact discovery was
`completed in October, opening expert reports have been served, and as of the date of this
`filing rebuttal expert reports will have been served as well. (See Dkt. 1081.) Such
`circumstances weigh against a stay. Originally, the trial was scheduled for March 20, 2021.
`When the parties jointly requested a modification of the case schedule in September, they
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`1 The parties have jointly agreed to extend various deadlines that have not involved the
`Court at various times, including agreeing to take certain fact depositions after the cut-off
`as well as to a later exchange of expert reports.
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`intended that it only be a “modest” one, though they did not propose a new trial date. (Dkt.
`103.) The Court then of its own initiative set July 27, 2021 as the new trial date. (Dkt. 108.)
`It would be manifestly unfair for the schedule to constrain the time Philips has had to
`conduct discovery (which Philips has diligently pursued in earnest reliance on the case
`schedule), only to have the schedule conveniently be of no consequence when Garmin
`decides a stay would be advantageous.
`What Garmin’s request for a stay boils down to is a request to postpone the
`possibility of an adverse judgment due to Garmin’s willful infringement of Philips’s
`patents, especially in light of the Board’s rejection of the IPR against the ‘377 patent and
`no IPR against the ‘542 patent. In view of how far along the parties are, it makes the most
`sense to continue with the case schedule as planned. While it is speculative to believe that
`the current trial date might need to be pushed because of the pandemic in view of the
`vaccination rates across the country, even if that were the case, a modest postponement
`would not justify the relief Garmin requests nor would it justify putting off summary
`judgment and motions in limine and all the other work the parties can proceed with in
`getting ready for trial.
`B. A Stay Will Not Simplify the Issues
`1.
`Stays are disfavored when only a subset of the asserted patents
`are subject to IPR
`The fact that the IPR here only relates to one of the three patents still in dispute
`counsels in favor of continuing as to all the patents. SZ DJI Tech. Co. v. Yuneec Int’l Co.,
`No. CV 16- 0595-BRO (KKx), 2016 U.S. Dist. LEXIS 187770, at *9 (C.D. Cal. Dec. 5,
`2016) (declining to stay any part of the case in view of the fact that most of the patents at
`issue were not subject to an IPR); SCVNGR, Inc. v. eCharge Licensing, LLC, No. 13-
`12418-DJC, 2014 U.S. Dist. LEXIS 135408, at *26 (D. Mass. Sep. 25, 2014) (“A stay no
`doubt simplifies the issues where all of the patents-in-suit are subject to IPR. This is not
`such a case, however. Here, only three of the eight patents-in-suit are subject to IPR. Under
`these circumstances, courts generally deny a stay of the proceedings.”). As explained in
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`RR Donnelley & Sons Co. v. Xerox Corp., No. 12-cv-6198, 2013 U.S. Dist. LEXIS 176620,
`at *7-8 (N.D. Ill. Dec. 16, 2013):
`Granting a stay as to the entire litigation would cause the four
`unchallenged VDP patents to languish unresolved for an
`unspecified amount of time, and up to two years if one or both of
`Xerox’s petitions is granted. See Dane Technologies, Inc. v.
`Gatekeeper Systems, Inc., 2013 U.S. Dist. LEXIS 117718, 2013
`WL 4483355 at *1-3 (D. Minn. 2013). Indeed, other courts have
`denied a stay where the accused infringer sought review of only
`some of the patents-in-suit. See e.g. id. (denying motion to stay
`pending a requested but not yet granted inter partes review, in
`part, because one of three patents-in-suit would not be subject to
`the reexamination); Davol, Inc. v. Atrium Medical Corp., 2013
`U.S. Dist. LEXIS 84533, 2013 WL 3013343 at *2-6 (D. Del.
`2013) (same); 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) (denying motion to stay
`pending inter partes reexamination where only three of the seven
`patents-in-suit were involved in the reexamination).
`2.
`The ’377 Patent and the ’542 Patent Claim Subject Matter
`Separate and Apart from the ’233 Patent
`It is Garmin’s burden to show entitlement to a stay. Trusted Knight Corp. v. IBM,
`No. 19-cv-01206-EMC, 2020 U.S. Dist. LEXIS 158218, at *4 (N.D. Cal. Aug. 31, 2020).
`However, Garmin barely addresses how a decision in the ’233 Patent IPR simplifies the
`case when that decision has no effect on two-thirds of the asserted patents. Indeed, the ’377
`Patent and ’542 Patent are directed to different technology from the ’233 Patent such that
`any hypothetical invalidation of the ’233 Patent would not inform the result as to the ’377
`and ’542 Patent. Garmin again dismisses the reality that the ’377 Patent and ’542 Patent
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`are directed to different technologies by repeating its position that the “patents are all
`utilized across the same allegedly infringing products and involve electronic monitoring of
`athletes.” (Dkt. 120 at 2.) Further, the Board has already found that the merits of a previous
`validity challenge weak. However, once again, this over generalization loses sight of the
`fact that multiple distinctly different accused functionalities of the infringing products are
`at stake, like a car whose radio infringes one patent, and whose climate control system
`infringes a second unrelated patent.
`Garmin frames the magnitude of issues affected based on asserted claims, stating
`“half are from the ’233 Patent” and “if the PTAB invalidates all of the asserted claims in
`the ’233, half of Philips case will be eliminated.” (Dkt. 120 at 5.) However, Philips
`disagrees that the magnitude of the case is purely dependent upon the number of asserted
`claims. Instead, because each of the asserted patents is directed to different technology,
`and it is more accurate to state than only one-third of case would be effected by the PTAB’s
`decision. Moreover, without a meaningful validity defense on the ‘377 patent, Garmin’s
`willful infringement should not go on unresolved.
`In sum, whatever happens in the IPR on the ’233 Patent will not have any bearing
`on the legal analyses that need to happen with respect to the ’377 and ’542 Patents, and as
`this Court has already recognized that “the Court is not inclined to separate the claims,”
`trial should proceed for all three asserted patents. (See Dkt. 118 at 3.)
`3.
`The prior art asserted by Garmin in the IPR is only a subset of
`the prior art relied on by Garmin in litigation.
`Garmin largely chose a separate set of prior art references to use in its IPR than it
`chose to assert here. In the IPR Garmin relied on:
` U.S. Patent No. 6,198,394 to Jacobsen et. al (“Jacobsen”);
` U.S. Patent No. 6,175,752 to Say et al.;
` U.S. Patent No. 6,602,191 to Quy;
` U.S. Patent No. 6,366,871 to Geva;
` U.S. Patent No. 5,961,451 to Reber et al.; and
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` U.S. Patent No. 6,160,986 to Gabai et al.
`In litigation, Garmin has abandoned many of the prior art references originally disclosed,
`and in its expert report relies solely on the following references:
` U.S. Patent No. 7,670,263 to Ellis et al.;
` U.S. Patent No. 6,605,038 to Teller et al.;
` The Dynastream SDM Triax System;
` Various Polar Watch Systems; and
` U.S. Patent No. 6,198,394 to Jacobsen et. al (“Jacobsen”);
`As a result, there are validity issues presently set for trial in this matter that the IPR
`petition will never address. It is perhaps worth noting that Garmin’s IPR petition was a
`petition originally filed by Fitbit, which Garmin later joined. That Garmin chose not to
`pursue many of the same arguments in this litigation perhaps suggests that Garmin does
`not truly believe that the IPR petitions will, at the end of the day, result in invalidity.
`4.
`Philips position in the IPR against the ’233 Patent does not
`support a finding of non-infringement and does not simplify the
`issues
`Philips position in the ’233 Patent IPR is that Jacobson does not disclose the
`limitation “(c) a security mechanism governing information transmitted between the first
`personal and the second device” because Jacobson discloses a self-disabling means that
`results in the device being rendered inoperable and thus incapable of transmitting any
`information, precluding the ability for any security mechanism to “govern information
`transmitted between a first personal device and a second device” as required by the claims.
`That simply has nothing to do with the accused Garmin security mechanism in this case,
`which involves the Garmin Connect Mobile App, and how it governs information
`transmitted between a Garmin activity tracker or smart watch and a user’s phone. While
`both the Garmin Connect App and Jacobsen use a password, the functionality is
`completely different.
`As to Garmin’s second non-infringement argument that its devices do not meet the
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`“multiple levels of prioritization, authentication of a person….,” is a red herring, as Garmin
`is merely citing the ’233 Patent’s Abstract, and not a new argument raised in the IPR.
`Further, the notion that Philips’s IPR argument varies from its position in this litigation
`strain credulity as this exact same quote from the Abstract is in Philips’s expert’s opening
`infringement expert report.
`There is simply no merit to the non-infringement arguments manufactured by
`Garmin for the purposes of attempting to justify a stay based on the single IPR filed against
`the ’233 patent. However, were there merit to them, they would still not justify a complete
`stay of this action, nor would the PTAB’s determinations somehow be binding on this court
`prior to the exhaustion of any appeals.
`C.
`Further Delay is Prejudicial to Philips and Weighs Against a Stay
`Staying this case will unduly prejudice and present a clear tactical disadvantage to
`Philips. Garmin filed its IPR petition on April 8, 2020, over eight months after receiving
`service of the complaint in this action. Further, while the PTAB instituted IPR on October
`27, 2020, Garmin waited until January 22, 2021 to file this motion to stay, nearly three
`months later. During this time the parties and Court have undertaken significant time and
`expense to advance the litigation to its current advanced state. This delay has been unduly
`prejudicial to Philips especially as the July 27, 2021 trial date approaches. Further, while
`the ’377 and ’233 Patents have expired, the ’542 Patent remains in force, is not subject to
`any IPR proceeding, and is continually infringed by Garmin.
`IV. CONCLUSION
`For the reasons set forth above, Philips respectfully requests the Court to deny
`Garmin’s Motion to Modify the Scheduling Order Until After the PTAB’s Final Decision
`on the ’233 Patent.
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` DATED: February 5, 2021
`
`FOLEY & LARDNER LLP
`
`/s/ Jean-Paul Ciardullo
`Jean-Paul Ciardullo
`Eley O. Thompson
`Ruben J. Rodrigues
`Lucas I. Silva
`John W. Custer
`Attorneys for Philips North America, LLC
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