Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 1 of 49 Page ID #:4102
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`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
`
`PHILIPS NORTH AMERICA LLC,
`Plaintiffs,
`
`v.
`GARMIN INTERNATIONAL, INC.
` and GARMIN LTD.,
`
`Defendants.
`
`Case No. 2:19-cv-6301-AB-KS
`SECOND AMENDED COMPLAINT
`FOR PATENT INFRINGMENT
`
`JURY TRIAL DEMANDED
`
`1
`
`COMPLAINT
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 2 of 49 Page ID #:4103
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`Philips North America LLC (“Philips North America” or “Plaintiff”), by its
`undersigned counsel, hereby alleges, with knowledge with respect to its own acts and on
`information and belief as to other matters, the following in support of its Complaint
`against Garmin International, Inc., and Garmin Ltd. (collectively “Defendants” or
`“Garmin”).
`
`NATURE OF THE ACTION
`Philips North America brings this action to compel Garmin to stop
`1.
`infringing Philips North America’s patents, and to compensate Philips North America for
`Garmin’s past infringement.
`2.
`Philips North America is a subsidiary of Koninklijke Philips N.V.,
`originally founded in 1891, and a world leader in technology and innovation across many
`technological fields (generally referred to as “Philips”). For more than 100 years, Philips
`has dedicated significant resources to research and development for the advancement of
`technology used around the world.
`3.
`Philips strives to make the world heathier and more sustainable through
`innovation with the goal of improving lives of billions of people. Philips approaches
`healthcare as a continuum where its technologies can be applied across activities of
`healthy living, prevention, diagnosis, treatment and home care as depicted below:
`
`2
`
`COMPLAINT
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 3 of 49 Page ID #:4104
`
`
`4. Connected health technologies developed by Philips are employed across the
`health continuum. Both inside and outside hospitals, Philips has developed technologies
`that empower consumers to better manage their health by improving access to and
`analysis of personal health and fitness information obtained in various manners. Philips
`provides the Actiwatch family of devices, which are designed to help better understand
`the daily activity and sleep and wake patterns of individuals. Examples of Philips
`Actiwatch devices are shown here:
`
`
`
`In another example, MIO Global incorporated Philips’ heart rate monitor
`5.
`technology into its MIO Alpha fitness tracker watch, making it among the first and most
`accurate integrated wrist-worn heartrate monitors available. Philips continues to lead the
`development of technologies that underpin connected health products including trackers.
`Others have recognized the value of Philips’ investment in innovation in this area and
`have sought and taken technology licenses from Philips, including licenses to the patents
`asserted in this case.
`Philips also invests in technologies developed by other companies and has
`6.
`acquired companies and their patented innovative technologies as part of its emphasis on
`3
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 4 of 49 Page ID #:4105
`
`
`supporting and advancing innovation. Philips has made numerous direct investments in
`connected health technologies in recent years, including its acquisition of Lifeline
`Systems, Inc. in 2006, its acquisition of Wellcentive in 2016, its acquisitions of Health
`and Parenting LTD and VitalHealth in 2017, and its acquisition of Blue Willow Systems
`in 2018. Each of these acquisitions expanded Philips’ capabilities in personal health
`management and supported Philips’ longstanding commitment to deliver integrated
`solutions across the health continuum.
`Philips shares its innovation with others through, for example, its pioneering
`7.
`role in open innovation as well as in offering access to its technology through licensing.
`In this way, Philips has been able to share its innovations with many other companies.
`Licensing revenues fund further research at Philips. Philips’ patent portfolio currently
`includes more than 60,000 patents, and in 2017 Philips filed more patent applications in
`the field of medical technology at the European Patent Office than any other company in
`the world.
`8. While some of Philips’ patents are asserted in this action, Philips has many
`others covering connected health. The patented technologies asserted in this action
`enable and enhance customer demand for products such as, for example: GPS/audio
`athletic training, security mechanisms for transmission of personal data, connected
`wearable/online products, and handling of interrupted connections.
`Founded in 1989 as “ProNav,” Garmin was originally a company that
`9.
`offered devices for navigation. Garmin did not offer a wearable tracker for athletic
`activity until 2014, after the smartphone eliminated demand for handheld GPS devices
`and
`Garmin’s
`sales
`plummeted.
`
`See
`https://www.forbes.com/sites/alexknapp/2016/09/14/how-garmin-mapped-out-a-new-
`direction-with-fitness-wearables/#5f382ea727b9. In entering the wearable tracker market,
`Garmin leveraged the patented technology of Philips from the beginning. Garmin
`experienced
`significant
`growth
`and
`revenues
`as
`a
`result.
`
`See
`https://www.cnet.com/news/garmins-doing-well-in-wearables/.
`4
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 5 of 49 Page ID #:4106
`
`
`10. For years, Philips has repeatedly offered to license rights in the Patents-in-
`Suit1 to Garmin, but Garmin has repeatedly refused to accept Philips’ offers to license.
`Garmin’s past and continuing sales of its devices i) willfully infringes Philips’ Patents-in-
`Suit and ii) impermissibly takes the significant benefits of Philips’ patented technologies
`without compensation to Philips. Garmin’s refusal to take a royalty bearing license under
`the Patents-in-Suit has forced Philips to seek remediation to stop Garmin’s continuing
`willful infringement of the Patents-in-Suit and to be compensated for Garmin’s past
`willful infringement of the Patents-in-Suit.
`PARTIES
`11. Plaintiff Philips North America LLC (formerly known as Philips Electronics
`North America Corporation) is a limited liability company duly organized and existing
`under the laws of Delaware. There are facilities for Philips Sonicare in Ontario, CA
`within this Judicial District in addition to Philips Respironics in Carlsbad, CA. Philips
`has been a technology leader for over a century including in the field of connected health
`products and across the healthcare continuum. Philips patented innovations in this action
`pertain to GPS/audio athletic training, security mechanisms for transmission of personal
`data, connected wearable/online products, and handling of interrupted connections.
`12. Defendant Garmin International, Inc. is a corporation organized under the
`laws of Kansas having a regular and established place of business located at 120
`Cremona Drive, Goleta, CA, within this Judicial District.
`13. Defendant Garmin International, Inc. also has a regular and established place
`of business at 21680 Gateway Center Drive, Diamond Bar, CA, within this Judicial
`District.
`14. Defendant Garmin Ltd. is a foreign company organized and existing under
`the laws of Switzerland with its principal place of business at Muhlenstalstrasse 2, 8200
`
`
`1 The “Patents-in-Suit” refer to the patents identified below in Counts I-IV.
`5
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 6 of 49 Page ID #:4107
`
`
`Schaffhausen, Switzerland. In addition to infringements, many leadership decisions are
`made from Garmin Ltd.
`15. Garmin International, Inc. is a wholly owned subsidiary of Garmin Ltd.
`16. Garmin develops, manufactures, markets, sells and uses connected health
`products including ones that employ GPS/audio athletic training, security mechanisms for
`transmission of personal data, connected wearable/online products, and handling of
`interrupted connections that incorporate Philips’ patented technology. Garmin has not
`obtained a license or otherwise acquired rights from Philips for use of the Patents-in-Suit.
`Instead, Garmin chose a path of willful infringement.
`JURISDICTION AND VENUE
`17. This action arises under the patent laws of the United States, Title 35 U.S.C.
`§§ 1, et seq. This Court has both general and specific personal jurisdiction over Garmin
`because Garmin has purposefully availed itself of the privilege of conducting business
`activities and has conducted and done business within California and this Judicial
`District. Garmin has availed itself of the rights and benefits of California law and has
`engaged in systematic and continuous contact with California, including with respect to
`the development, manufacture, marketing, sale and use of one or more Accused
`Products2. Garmin also derives substantial revenue from sales of the infringing products
`and services in California, and it has availed itself of the privilege of doing business
`within California. Garmin’s presence in this Judicial District requires it to pay taxes in
`California. Garmin is licensed to do business in California.
`18. Personal jurisdiction is proper because Garmin is doing business and has
`committed acts of direct and joint infringement in this Judicial District. This Court has
`personal jurisdiction over Garmin because, inter alia, this action arises from activities
`Garmin directed towards California. For example, Garmin ships infringing products to
`
`
`2 The “Accused Products” refers to the products accused of infringement herein such as
`referenced in Paragraphs 44-47 including all substantially similar products.
`6
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 7 of 49 Page ID #:4108
`
`
`residents of California for use in this Judicial District, and it collects substantial revenues
`from such residents and related sales.
`19. As indicated above, Defendant Garmin International, Inc. maintains a
`regular and established place of business at 120 Cremona Drive, Goleta, CA. Research
`and development activities are conducted at Garmin’s Goleta, CA location, including
`software engineering related to the features and functionality of one or more of the
`Accused Product.
` As indicated above, Defendant Garmin International, Inc. maintains a
`20.
`regular and established place of business at 21680 Gateway Center Drive, Diamond Bar,
`CA. Research and development activities are conducted at Garmin’s Diamond Bar, CA
`location, including software engineering related to the features and functionality of one or
`more of the Accused Products.
`21. Defendant Garmin Ltd. has shipped one or more of the Accused Products
`through the port of Los Angeles to Defendant Garmin USA, Inc. and/or Defendant
`Garmin International, Inc. for distribution within this Judicial District.
`22. Defendant Garmin Ltd. maintains ownership of software operating on
`infringing products and systems within this jurisdiction. For example, Garmin provides:
`“Garmin Ltd. and its subsidiaries (“Garmin”) grant you a license to use the software
`embedded in this device (the “Software”) … Title, ownership rights, and intellectual
`rights in and to the Software remain in Garmin and/or its third-party providers.” Source:
`Garmin
`vivofit
`Owner’s
`Manual
`(available
`at
`https://www8.garmin.com/manuals/webhelp/vivofit/EN-US/GUID-31E7CFE8-6348-
`49BC-9561-742127047774.html). Many devices running Garmin owned software are
`operating to infringe in this Judicial District.
`23. Exercising personal jurisdiction over Garmin in this Judicial District would
`not be unreasonable given Garmin’s extensive contacts with this Judicial District, the
`interest of this Judicial District in resolving disputes related to products and/or services
`
`7
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 8 of 49 Page ID #:4109
`
`
`sold herein, and the harm that would occur to Plaintiff if the Court did not exercise
`personal jurisdiction over Garmin.
`In addition, Garmin has knowingly induced and continues to induce and/or
`24.
`contribute to infringement within this Judicial District by advertising, marketing, offering
`for sale and/or selling devices with hardware and/or software that includes infringing
`functionality
`to consumers, customers, partners and/or end users (collectively
`“customers”), and it provides instructions, user manuals, advertising, and/or marketing
`materials which facilitate, direct, or encourage such infringing use with knowledge
`thereof. Garmin also jointly infringes with its customers and subscribers in this Judicial
`District with the establishment and operation of connected health solutions covered by
`the Patents-in-Suit.
`25. Each of the Accused Products has been sold by Garmin and shipped to
`residents of California for use in this Judicial District, and Garmin collects substantial
`revenues from such residents and related sales.
`26. One or more of the Accused Products are sold at BestBuy and Target retail
`stores located in this Judicial District.
` Defendant Garmin Ltd. has purposefully and knowingly directed sales of
`27.
`one or more of the Accused Products to California and this Judicial District, at least
`through agreements with its subsidiaries Garmin USA, Inc. and/or Garmin International,
`Inc.
`
` Defendant Garmin Ltd. has purposefully and knowingly directed sales of
`28.
`one or more of the Accused Products to California and this Judicial District, at least
`through established distribution channels it maintains targeting the state of California.
` Garmin owns the software deployed on devices in this Judicial District
`29.
`operating in manners to directly infringe with other products and systems offered by
`Garmin.
`
`8
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 9 of 49 Page ID #:4110
`
`
`30. Defendant Garmin Ltd. is aware that its subsidiaries Garmin USA, Inc.
`and/or Garmin International, Inc. direct sales of the Accused Products to California and
`this Judicial District.
`31. For these reasons, and for reasons that will be presented to the Court if
`jurisdiction is challenged, the Court has personal jurisdiction over each of the
`Defendants.
`32. Venue is proper under 28 U.S.C. §§ 1391(b), 1391(c), and 1400(b) because
`Garmin resides in this Judicial District and has substantial additional activities in this
`Judicial District as alleged herein (see e.g. paragraphs 20-24). Garmin has also engaged
`and continues to engage in infringing acts in this Judicial District such as alleged herein
`(see e.g. paragraphs 28-34).
`33. Garmin has admitted that it maintains a regular and established place of
`business in this Judicial District. On June 12, 2017, in the case styled Location Based
`Services, LLC v. Garmin International, Inc., 17-cv-133-JRG-RSP (E.D. Tex.), the parties
`filed a joint motion to transfer the case to this Court, stating that the “Defendant has a
`regularly established place of business” in this Judicial District.
`34. Venue is proper as to defendant Garmin Ltd. because Garmin Ltd. is a
`foreign entity and venue is proper wherever there is personal jurisdiction.
`35. Garmin purposefully directs sales and offers for sale the Accused Products,
`including those specifically identified below, toward California and this Judicial District.
`36. Furthermore, on information and belief, Garmin has committed acts of direct
`and joint infringement in this Judicial District through its development and use of the
`Accused Products in one or both of its California facilities, and/or by prototyping and
`testing functionality of the Accused Products in one or both of its California facilities that
`infringe one or more claims of the Patents-in-Suit.
`FACTUAL BACKGROUND
`Philips Background and Innovation Leadership
`
`9
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 10 of 49 Page ID #:4111
`
`
`37. Philips is a world-renowned company engaged in research and development
`in numerous technological fields. One of these fields pertains to connected health, which
`seeks to empower consumers to better manage their health and fitness by improving
`access to their own healthcare related information.
`38. Philips is a worldwide leader in the field of connected health. For example,
`Philips has developed systems for wearable wireless devices that can be worn discreetly
`around the neck to detect important patient information such as detecting falls and
`tracking step count. Philips offers HomeSafe and GoSafe Lifeline systems that include
`personal medical alert devices that enable the wearer to summon medical help in the
`event of an emergency. Philips has also developed HealthSuite, which is a cloud-based
`digital platform that promotes collaboration in the field of connected health by enabling
`Philips and its partners to connect devices, collect health data, and securely aggregate,
`store and analyze the data, as well as the Actiwatch and other products noted above.
`39. The Philips Lifeline product is depicted below:
`
`
`
`40. Philips North America invests heavily to promote innovation in the area of
`connected health. For example, Philips North America has hosted a Connect2Care User
`Summit in Los Angeles, which provides an opportunity for innovators from across the
`healthcare industry to explore top-of-mind issues in connected health, and to participate
`10
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 11 of 49 Page ID #:4112
`
`
`in an energizing exchange of ideas in an immersive and collaborative environment.
`Philips has also organized and funded healthcare “hackathons” in California that
`challenge software developers to create new solutions that enable health care providers to
`deliver higher quality of care in the hospital or the home by integrating data from
`personal, clinical and environmental sources. Philips North America also operates a
`nationwide open innovation portal called SPICE, through which companies and
`individuals can connect with one another, discuss their innovations with experts at
`Philips, and learn from Philips’ experience in the area of connected health.
`Garmin Background and Infringement
`41. Garmin develops and sells wireless-enabled wearable devices that measure
`data such as number of steps walked, heart rate, blood oxygen, duration and quality of
`sleep, number of steps climbed, and other inputs related to personal fitness and health.
`In addition to wearable devices, Garmin has developed and makes available
`42.
`for download various smartphone software applications that also enable users to connect
`to devices, record and analyze their fitness information. Garmin also maintains servers
`interfacing with the software applications and wearable devices collecting sensed
`information and providing calculated fitness and health information to its subscribers.
`43. While others using the patented technology have taken licenses to the
`Patents-in-Suit (or foreign equivalents) Garmin has refused to take a license and
`continues to infringe the Patents-in-Suit. Garmin has received multiple communications
`from Philips concerning the patents-in-suit and its infringement since approximately
`February of 2016, but it has failed to cease it infringing activities or to provide any
`response to Philips.
`
`Accused Products
`44. Garmin is, and has been, engaged in manufacturing and/or having
`manufactured, selling and/or offering for sale within the United States, using in the
`United States, and/or importing into the United States fitness tracking devices and/or
`
`11
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 12 of 49 Page ID #:4113
`
`
`accompanying software applications and servers providing functionality covered by one
`or more claims of each of the Patents-in-Suit (the “Accused Products”).
`the
`infringing
`fitness
`tracking devices
`45. Non-limiting examples of
`manufactured, sold, offered for sale, used, and/or imported by or for Garmin include
`various Approach, Edge, Forerunner, vivofit, vivosport, vivosmart, and Fenix 5 fitness
`tracker devices used in combination with Garmin apps running on smartphones or other
`devices model fitness trackers. Each of these fitness tracking devices has been sold
`and/or used within this Judicial District, without limitation, through the website
`https://buy.garmin.com.
`46. Garmin maintains established distribution channels within the United States
`that permit Garmin to ship the Accused Products, including those specifically identified
`in this Complaint, to the state of California and this Judicial District.
`47. Garmin’s smartphone software applications are available for download on
`the Apple App Store, Google Play, the Windows Store, etc. On April 10, 2019, Garmin
`announced that its Connect IQ app had been downloaded over 90 million times to more
`than 10 million compatible smartphones. Garmin’s software applications are available
`for download throughout the United States including within this Judicial District and
`users of the Accused Products have downloaded Garmin’s software applications within
`this Judicial District for use with the Accused Products.
`Patents-in-Suit
`48. The following patents are infringed by Garmin (“Patents-in-Suit”): U.S.
`Patent No. 6,013,007 (“the ’007 patent”), U.S. Patent No. 7,088,233 (“the ’233 patent”);
`U.S. Patent No. 8,277,377 (“the ’377 patent”) and U.S. Patent No. 9,801,542 (“the ’542
`patent”).
`49. The Patents-in-Suit derive from and/or relate to Philips’ efforts in this field
`of technology and claim protection for, among other things, GPS/audio athletic training,
`security mechanisms for transmission of personal data, connected wearable/online
`
`12
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 13 of 49 Page ID #:4114
`
`
`products, handling of interrupted connections, accurate recording of physical activity, and
`providing warnings in response to undesirable physiological conditions.
`50. Garmin has been and is still directly infringing, jointly infringing,
`contributing to infringement, and/or inducing others to infringe the Patents-in-Suit by
`making, using, offering for sale, selling, or importing devices that practice the Patents-in-
`Suit. Garmin’s acts of infringement have occurred within this Judicial District and
`elsewhere throughout the United States.
`U.S. Patent No. 6,013,007
`51. The United States Patent and Trademark Office duly and legally issued the
`’007 patent to inventor Gary Miller Root on January 11, 2000. The ’007 patent is titled
`Athlete’s GPS-Based Performance Monitor. A true and accurate copy of the ’007 patent
`was filed as Exhibit A to the First Amended Complaint, Dkt. No. 45-1.
`52. Philips North America is the owner and assignee of all legal title in the ’007
`patent and holds the right to sue and recover damages for infringement thereof, including
`ongoing and past infringement.
`U.S. Patent No. 7,088,233
`53. The United States Patent and Trademark Office duly and legally issued the
`’233 patent to inventor Raymond J. Menard on August 8, 2006. The ’233 patent is titled
`Personal Medical Device Communication System and Method. A true and accurate copy
`of the ’233 patent was filed as Exhibit B to the First Amended Complaint, Dkt. No. 45-2.
`54. Philips North America is the owner and assignee of all legal title in the ’233
`patent and holds the right to sue and recover damages for infringement thereof, including
`ongoing and past infringement.
`U.S. Patent No. 8,277,377
`55. The United States Patent and Trademark Office duly and legally issued the
`’377 patent to inventor Roger J. Quy on October 2, 2012. The ’377 patent is titled
`Method and Apparatus for Monitoring Exercise with Wireless Internet Connectivity. A
`
`13
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 14 of 49 Page ID #:4115
`
`
`true and accurate copy of the ’377 patent was filed as Exhibit C to the First Amended
`Complaint, Dkt. No. 45-3.
`56. Philips North America is the owner and assignee of all legal title in the ’377
`patent and holds the right to sue and recover damages for infringement thereof, including
`ongoing and past infringement.
`U.S. Patent No. 9,801,542
`57. The United States Patent and Trademark Office duly and legally issued the
`’542 patent to inventors Bao Tran and Ha Tran on October 31, 2017. The ’542 patent is
`titled Health Monitoring Appliance. A true and accurate copy of the ’542 patent was
`filed as Exhibit F to the First Amended Complaint, Dkt. No. 45-6.
`58. Philips North America is the owner and assignee of all legal title in the ’542
`patent and holds the right to sue and recover damages for infringement thereof, including
`ongoing and past infringement.
`
`
`Garmin’s Knowledge of Infringement
`59. Garmin had knowledge of each of the Patents-in-Suit as alleged herein and
`prior to that date was at least willfully blind to each patent and its infringement.
`60. On or about February 17, 2016, Philips sent a communication to the founder
`and CEO of Garmin, Mr. Clifton A. Pemble, notifying Garmin and Mr. Pemble that
`several Accused Products offered for sale and sold by Garmin infringe the ’233 patent
`and the ’007 patent. In subsequent discussions on or about December 8, 2016, Philips
`notified Garmin that several Accused Products offered for sale and sold by Garmin
`infringe the ’377 patent.
`
`COUNT I
`INFRINGEMENT OF U.S. PATENT NO. 6,013,007
`61. The allegations of each of the foregoing paragraphs are incorporated by
`reference as if fully set forth herein.
`62. The ’007 patent is valid and enforceable.
`14
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 15 of 49 Page ID #:4116
`
`
`63. Garmin, in violation of 35 U.S.C. § 271, has infringed and continues to
`infringe at least claim 23 of the ’007 patent by making, using, offering to sell, selling,
`and/or importing the Accused Products that practice the claimed inventions in the ’007
`patent, either literally or under the doctrine of equivalents, either individually and/or
`jointly with their customers and subscribers employing their online products and apps
`including by way of example, the Approach, Edge, Forerunner, vivofit, vivosport,
`vivosmart and Fenix 5 fitness tracker devices.
`64. The Accused Products including access to the Garmin account and
`operational apps and related programs are provided under the direction and control of
`Garmin. Garmin establishes the procedures and timing to operate the Accused Products
`with the Garmin account including receipt of the benefits of the Accused Products.
`Access to the Garmin servers is limited to customers and subscribers that download and
`activate the required software and apps on to a smartphone or other wireless device.
`65. The Accused Products infringe one or more claims of the ’007 patent. For
`example, claim 23 of the ’007 patent is generally directed to a system that has a global
`positioning system GPS obtaining a series of time-stamped waypoints, that computes
`athletic performance feedback data from the series of time-stamped waypoints obtained
`by the GPS receiver, that presents the athletic performance feedback data to an athlete,
`that has a modem for transmitting the athletic performance feedback data to a remote
`computer for comparison with athletic performance data of other athletes, and that has a
`headset and an audio module for presenting the athletic performance feedback data over
`the headset. The Accused Products are wearable fitness tracking devices that practice the
`claimed invention, including among other things and without limitation, by computing
`athletic performance feedback data from a series of time-stamped waypoints obtained by
`a GPS receiver, such as distance, time, pace, etc., and transmitting the athletic
`performance feedback data to a remote computer for comparison, and presenting the
`athletic performance feedback data over the headset. In some examples, Garmin provides
`the following:
`
`15
`
`COMPLAINT
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 16 of 49 Page ID #:4117
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`Source: https://connect.garmin.com/
`The Accused Products further present athletic performance feedback data to an athlete,
`for example by providing “audio prompts” to an athlete wearing the device during a
`fitness activity. In an example, Garmin provides the following:
`
`
`
`Source: https://www8.garmin.com/manuals/webhelp/forerunner235/EN-US/GUID-
`6A3A1403-F519-4990-B5C7-718E9352006D.html
`In additional examples, Garmin provides competitions:
`
`
`
`16
`
`COMPLAINT
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 17 of 49 Page ID #:4118
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`Source: https://www8.garmin.com/manuals/webhelp/marqathlete/EN-US/GUID-
`FA0BDAD5-4576-4D05-B76B-A3B6712D0959.html
`Garmin also provides the following:
`
`
`
`
`
`Source: https://connect.garmin.com/
`Under the direction and control of Garmin, the Accused Products and apps running online
`on mobile devices and connected to Garmin servers include aspects of a global
`17
`
`COMPLAINT
`
`

`

`Case 2:19-cv-06301-AB-KS Document 126 Filed 03/04/21 Page 18 of 49 Page ID #:4119
`
`
`positioning system GPS receiver obtaining a series of time-stamped waypoints, they
`compute athletic performance feedback data from the series of time-stamped waypoints
`obtained by the GPS receiver (e.g. time-stamped waypoints are used to compute athletic
`performance feedback data), they present the athletic performance feedback data to an
`athlete (e.g., updates presented by the Accused Products), they include a modem for
`transmitting the athletic performan