Case 2:19-cv-06301-AB-KS Document 124 Filed 02/08/21 Page 1 of 7 Page ID #:4043
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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
`REPLY ISO MOTION TO EXTEND
`TRIAL DATES 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 124 Filed 02/08/21 Page 2 of 7 Page ID #:4044
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`I.
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`GARMIN MERLEY SEEKS A SHORT EXTENSION OF THE TRIAL
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`SCHEDULE
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`Garmin respectfully seeks an extension of the trial dates in a case wherein Philips has
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`been in no rush to get to trial. Largely at Philips’ request, the Parties have jointly agreed to
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`extend case-schedule dates multiple times, both by joint stipulation and—as Philips admits—
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`privately between the Parties. See Opp., Dkt. No. 123 n.1; Dkt. Nos. 27, 46, 54, 90, 103, 108.
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`Further, as noted in Garmin’s Motion, Philips waited at least three years to bring this litigation.
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`Motion, at 7:10-20. On this record, Philips’ protestation at one more extension is telling.
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`Philips repeatedly characterizes Garmin’s motion as a request for a stay but, as Garmin’s
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`proposed order makes clear, Garmin has requested a mere extension. See Dkt. No. 120-4.
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`Specifically, Garmin sought an order extending the dates for dispositive motions three months,
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`with new dates keyed off the summary judgement briefing schedule. Id.
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`As detailed in Garmin’s Motion and as admitted by Philips’ in its Opposition, there is
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`considerable overlap between the remaining three patents. Trying the case with all three
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`remaining patents before a final decision on the ’233 IPR is simply a waste of resources.
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`Notably, Philips’ allegations of prejudice amount to a mere paragraph of its Opposition, a
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`paragraph devoid of any factual support. Opp., at 7:12-20.
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`Philips attempts to commandeer the passions of this Court by repeatedly labeling Garmin
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`as a “willful” infringer. Id., at 3:8, 5:15. As Seneca said, “appeals to emotion betray weakness”.
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`Philips has already been forced to drop three of the originally asserted patents—half of its case—
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`because its infringement allegations were sanction-worthy. The remaining patents will suffer
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` Reply ISO 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 124 Filed 02/08/21 Page 3 of 7 Page ID #:4045
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`the same fate. Half of the remaining work may be resolved in the ’233 IPR.
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`At the end of the day, Garmin seeks a common-sense order: extend the case a few months
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`(three for summary judgment motions, ten months for trial) while the PTAB finalizes the ’233
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`IPR. An extension—an extension shorter than Philips has sought throughout this matter—
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`makes good sense.
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`II.
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`PHILIPS’ ADMISSIONS
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`Philips admits that the Parties have agreed to multiple extensions, both by stipulation
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`before this Court and by mutual agreement between the Parties. Opp., at 2:25-3:1; id. at n.1.
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`Philips argues that this Court reset the trial date sua sponte (Opp., 3:2), but it was the Parties that
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`moved to vacate the trial date, not this Honorable Court. Dkt. No. 103.
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`Philips admits that the Jacobson prior art is implicated in the ’233 IPR and in this case.
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`Op., at 2:12; id. at 5:24. Philips’ attempt to undermine the importance of Jacobson fails to
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`persuade, as discussed below.
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`Philips admits that half the asserted claims in this case come from the ’233 Patent. Opp.,
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`at 5:8-12.
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`Philips’ admissions alone counsel the brief extension requested by Garmin.
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`III. PHILIPS’ CONSTRUCTION OF SECURITY MECHANISM IN THE IPR
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`RENDERS ITS INFRINGEMENT CASE HERE IMPOSSIBLE
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`In its Motion, Garmin explained that Philips’ construction of “security mechanism” in
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`the IPR, if accepted by the PTAB, would render Philips’ infringement case impossible here. See
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`Motion, 5:13-6:22. Against Garmin’s detailed explanation, Philips merely quips that the
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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 124 Filed 02/08/21 Page 4 of 7 Page ID #:4046
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`security mechanism in Jacobson and the security mechanism in Garmin’s accused system are
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`“completely different”. Opp., 6:17-27. Hardly an evidentiary showing.
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`In the ’233 IPR, Philips argued that Jacobson is not prior art because the username and
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`password have a kill switch when the wrong password is entered. Motion, at 5:21-6:13; Dkt.
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`120-3, at 8; Lamkin Decl. Exh. AA. That is, Philips argued that Jacobson cannot provide a
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`security mechanism that governs information being transmitted, because no information is in
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`fact transmitted after the kill switch is triggered. Id. Here, Philips argues that the same
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`functionality (a username and password) in the Garmin system meets the “security mechanism”
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`limitation because it completely blocks information between the watch and the application.
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`(Martin Infringement Report, ¶¶108-122, Lamkin Decl., Exh. BB.) Philips is wrong; in the
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`Garmin system, the username and password govern the flow of information between the
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`application and the server, not the application and the watch, but that is of no moment here.
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`Here, Philips cannot have it both ways, either Jacobson is prior art (killing the ’233) or Jacobson
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`is not prior art based on Philips’ characterization of its “security mechanism”. If so, Garmin
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`does not infringe.1
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`Further, as noted in Garmin’s Motion and ignored in Philips’ Opposition, 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. Motion, at 6:14-23.
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`1 Garmin has other non-infringement positions, including that Garmin watches are not
`medical devices.
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`Motion to Extend
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`Case 2:19-cv-06301-AB-KS Document 124 Filed 02/08/21 Page 5 of 7 Page ID #:4047
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`Moreover, as this Court has found previously, “even if all of the asserted claims survive
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`review, the case would still be simplified because [Philips and Garmin] would be limited in
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`which arguments it could raise before this Court.” 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 *12 (C.D. Cal.
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`Sep. 27, 2017). “Even still, the Court believes it will benefit from the expert evaluation of the
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`issues by the Patent Office.” Id.
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`IV. PHILIPS FAILS TO ADDRESS THE MEDICAL/HEALTH MONITORING
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`OVERLAP
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`Philips fails to address in any meaningful way that all three remaining patents cover
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`monitoring medical and/or health/wellness in the user. See Motion, at 2:7-12, Claim
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`Construction Order, at 2, n.5, 18, 33, 40-41. Thus, this Court or jury will have to determine
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`whether the Garmin’s fitness watches are medical and/or wellness monitoring devices (they are
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`not). (See Lamkin Decl., Exhs. CC-DD.) It makes no sense to make that same determination
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`twice.
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`V.
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`PHILIPS FAILS TO EVIDENCE PREJUDICE
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`Devoting a mere paragraph in its Opposition, Philips claims it will be prejudiced by a
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`short extension. Opp., at 7:11-20. But Philips fails to proffer any actual evidence of prejudice.
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`Attorney argument is “not a meaningful evidentiary showing”. Hoist Fitness Sys. v. Tuffstuff
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`Fitness Int'l, No. ED CV 17-01388-AB (KKx), 2017 U.S. Dist. LEXIS 217132, at *13 (C.D.
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`Cal. Oct. 31, 2017). Again, Philips waited at least three years to bring this action and has
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`requested multiple extensions herein. SCA Hygiene Prods., 2017 U.S. Dist. LEXIS 218330, at
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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 124 Filed 02/08/21 Page 6 of 7 Page ID #:4048
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`*14 (“Seeing as how SCA delayed in bringing this action in the first place, its arguments of
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`prejudice are unpersuasive.”) Philips’ claims to prejudice are hard to countenance; they
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`certainly have not been evidenced.
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`VI. CONCLUSION
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`In 2020, in 79% of the cases, at least some claims of the instituted patents were
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`invalidated by the PTAB. In 52% of the cases, all claims of the asserted patents were
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`invalidated. Dkt. Nos. 120-1, 120-2. There is thus a near 80% probability that at least some of
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`the asserted claims of the ’233 patent will be invalidated and a 52% chance that all asserted
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`claims of the’233 Patent will be invalidated on or before October 27, 2021. That is, it more
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`likely than not, that half of the claims in this case will be terminated in the IPR. Philips does not
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`dispute these facts. A brief extension of the trial schedule is warranted, rationale, and
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`respectfully requested.
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`Respectfully submitted, Dated: February 8, 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.
`
`Michelle L. Marriott (pro hac vice)
`michelle.marriott@eriseip.com
`Erise IP, P.A.
`Motion to Extend
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 124 Filed 02/08/21 Page 7 of 7 Page ID #:4049
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`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`(913) 777-5600 Telephone
`(913) 777-5601 Facsimile
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`CERTIFICATE OF SERVICE
`On this date, February 8, 2021, I did personally serve upon counsel for Philips via
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`this Court’s ECF system the following documents:
`Reply ISO 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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