Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 1 of 21 Page ID #:4151
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`LAMKIN IP DEFENSE
`Rachael D. Lamkin (246066)
`One Harbor Drive, Suite 304
`Sausalito, CA 94965
`916.747.6091
`RDL@LamkinIPDefense.com
`
`Attorney for Defendant
`Garmin International
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`DEFENDANTS’ ANSWER TO PHILIPS’ SAC, AND AFFIRMATIVE
`DEFENSE, AND COUNTERCLAIMS
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`Pursuant to Federal Rule of Civil Procedure (“Rule”) 8(b), Defendants
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`(collectively “Garmin”) answers Plaintiff’s (“Philips’”) Second Amended Complaint
`(“FAC”), Dkt. No. 126.
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`Garmin objects that the great bulk of Philips’ FAC violates Rules 8(a) and
`10(b). Garmin has made a good faith attempt to answer the factual allegations in
`Philips’ SAC but herein objects that a great number of paragraphs are not “limited as
`far as practicable to a single set of circumstances”. Fed.R.Civ.P 10(b).
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`Garmin’s Answer to SAC
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`1
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`Case No. 2:19-cv-06301-AB (KSx)
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`DEFENDANTS’ ANSWER TO
`PHILIPS’ SAC, AND
`AFFIRMATIVE DEFENSE, AND
`COUNTERCLAIMS
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`Philips North America, LLC,
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`Plaintiff,
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`v.
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`
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`Garmin International, Inc. and Garmin
`Ltd.
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`Defendants.
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`LAMKIN IP DEFENSE
`Rachael D. Lamkin (246066)
`One Harbor Drive, Suite 304
`Sausalito, CA 94965
`916.747.6091
`RDL@LamkinIPDefense.com
`
`Attorney for Defendant
`Garmin International
`
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`DEFENDANTS’ ANSWER TO PHILIPS’ SAC, AND AFFIRMATIVE
`DEFENSE, AND COUNTERCLAIMS
`
`
`
`Pursuant to Federal Rule of Civil Procedure (“Rule”) 8(b), Defendants
`
`(collectively “Garmin”) answers Plaintiff’s (“Philips’”) Second Amended Complaint
`(“FAC”), Dkt. No. 126.
`
`Garmin objects that the great bulk of Philips’ FAC violates Rules 8(a) and
`10(b). Garmin has made a good faith attempt to answer the factual allegations in
`Philips’ SAC but herein objects that a great number of paragraphs are not “limited as
`far as practicable to a single set of circumstances”. Fed.R.Civ.P 10(b).
`
`Garmin’s Answer to SAC
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`
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`1
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`Case No. 2:19-cv-06301-AB (KSx)
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`DEFENDANTS’ ANSWER TO
`PHILIPS’ SAC, AND
`AFFIRMATIVE DEFENSE, AND
`COUNTERCLAIMS
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`Philips North America, LLC,
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`Plaintiff,
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`v.
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`
`
`Garmin International, Inc. and Garmin
`Ltd.
`
`
`Defendants.
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 2 of 21 Page ID #:4152
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`NATURE OF THE ACTION
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`1.
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`Garmin admits that Plaintiff Philips North America, LLC (“Philips”)
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`brings this action. Garmin denies the remainder of the allegations in this paragraph.
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`2.
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`Garmin admits that Philips is a subsidiary of Koninklijke Philips N.V.
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`Gamin lacks knowledge or information sufficient to form a belief about the truth of
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`the remaining allegations in this paragraph and therefore denies same.
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`3.
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`Garmin lacks knowledge or information sufficient to form a belief
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`about the truth of the allegations in this paragraph and therefore denies same.
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`4.
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`Garmin lacks knowledge or information sufficient to form a belief
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`about the truth of the allegations in this paragraph and therefore denies same.
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`5.
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`Garmin lacks knowledge or information sufficient to form a belief
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`about the truth of the allegations in this paragraph and therefore denies same.
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`6.
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`Garmin lacks knowledge or information sufficient to form a belief
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`about the truth of the allegations in this paragraph and therefore denies same.
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`7.
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`Garmin lacks knowledge or information sufficient to form a belief
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`about the truth of the allegations in this paragraph and therefore denies same.
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`8.
`Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`9.
`Garmin admits that a predecessor Garmin entity was founded in 1989
`as ProNav, Inc. and that it offered devices for navigation, including GPS-based
`products. Garmin denies the remaining allegations in this paragraph.
`10. Admit that Philips has tried to persuade Garmin to take a license to
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 3 of 21 Page ID #:4153
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`some of its patents since 2016. Denied as to the remaining allegations in this
`paragraph.
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`PARTIES
`11. Garmin generally denies Philips’ description of the Patents-in-Suit as
`overly broad. As to the remaining allegations in this paragraph, Garmin lacks
`knowledge or information sufficient to form a belief about the truth of the
`allegations in this paragraph and therefore denies same.
`12. Admitted.
`13. Admitted.
`14. Admitted except as to “infringements,” which is denied.
`15. Admitted.
`16. Garmin admits that it sells connected devices for athletic training that
`employs GPS. Garmin admits that it has not taken a license to the Patents-in-Suit.
`As to the remainder of the allegations in this paragraph, denied.
`JURISDICTION AND VENUE
`17. Garmin admits that this is an action under the patent laws. Garmin
`admits that subject matter jurisdiction is proper in this District. Garmin denies the
`remaining allegations in this paragraph.
`18. Garmin International admits that jurisdiction is proper. Garmin Ltd
`denies that personal jurisdiction is proper. As to the remaining allegations, denied.
`19. Admit that Garmin International maintains an engineering facility at
`said address. Remaining facts are denied.
`20. Admit that Garmin International maintains an engineering facility at
`said address. Remaining facts are denied.
`21. Denied.
`22. Denied.
`23. Admit that jurisdiction over Garmin International is proper. Garmin
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 4 of 21 Page ID #:4154
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`Ltd denies jurisdiction is proper but will not challenge jurisdiction for this matter
`alone. The remaining allegations are denied.
`24. Denied.
`25. Admit that Garmin International ships products into California. As to
`the remainder of the allegations, denied.
`26. Admitted.
`27. Denied.
`28. Denied.
`29. Denied.
`30. Admitted.
`31. Denied.
`32. Denied.
`33. Admit that Garmin International has engineering facilities in this
`District.
`34. Admitted.
`35. Denied.
`36. Denied.
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`FACTUAL BACKGROUND
`Philips Background and Innovation Leadership
`37. Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`38. Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`39. Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`40. Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 5 of 21 Page ID #:4155
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`Garmin Background and Infringement
`41. Admit that Garmin International develops and sells devices that
`measure personal fitness data such as steps walked, heart rate, and duration of sleep.
`As to the remainder of the allegations, denied.
`42. Admit that Garmin International develops and sells applications that
`connect to Garmin devices. As to the remainder of the allegations, denied.
`43. Admit that Garmin has refused to take a license to the Patents-in-Suit.
`As to any remaining allegations, denied.
`Accused Products
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`44. Denied.
`45. Denied.
`46. Garmin International admits that it ships some or all of the Accused
`Products to this District.
`47. Garmin International admits that its applications are available for
`download. Philips’ characterization of the April 10, 2019 press release is inaccurate
`and on that basis denies the remainder of the allegations.
`Patents-in-Suit
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`48. Denied.
`49. Denied.
`50. Denied.
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`U.S. Patent No. 6,013,007
`51. Garmin denies that the ’007 Patent is properly a “Patent-in-Suit” as it
`has been invalidated. Garmin denies that the ’007 Patent was duly and legally
`issued. As to the remaining allegations, admitted.
`52. Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`U.S. Patent No. 7,088,233
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 6 of 21 Page ID #:4156
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`53. Garmin denies that the ’233 Patent was duly and legally issued. As to
`the remaining allegations, admitted.
`54. Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`U.S. Patent No. 8,277,377
`55. Garmin denies that the ’377 Patent was duly and legally issued. As to
`the remaining allegations, admitted.
`56. Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`U.S. Patent No. 9,801,542
`57. Garmin denies that the ’542 Patent was duly and legally issued. As to
`the remaining allegations, admitted.
`58. Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`Garmin’s Knowledge of Infringement
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`59. Denied.
`60. Admit as to the ’007 and ’233. Garmin denies that Mr. Pemble is a
`founder of Garmin
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`COUNT 1
`INFRINGEMENT OF US PATENT NO. 6,013,007
`61. Admitted.
`62. Denied.
`63. Denied.
`64. Denied.
`65. Denied.1
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`1 Again, as exemplified in these paragraphs, the great bulk of Philips’ Complaint
`violates Rules 8(a) and 10(b). Garmin has made a good faith attempt to answer the
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 7 of 21 Page ID #:4157
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`66. Denied.
`67. Denied.
`68. Denied.
`69. Denied.
`70. Denied.
`71. Denied.
`72. Denied.
`73. Denied.
`74. Denied.
`75. Denied.
`76. Admitted.
`77. Denied.
`78. Denied.
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`COUNT II
`INFRINGEMENT OF PATENT NO. 7,088,233
`79. Admitted.
`80. Denied.
`81. Denied.
`82. Denied.
`83. Denied.
`84. Denied.
`85. Denied.
`86. Denied.
`87. Denied.
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`factual allegations in Philips’ Complaint but herein objects that nearly each
`paragraph is not “limited as far as practicable to a single set of circumstances”.
`Fed.R.Civ.P 10(b).
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 8 of 21 Page ID #:4158
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`88. Denied.
`89. Denied.
`90. Denied.
`91. Denied.
`92. Denied.
`93. Denied.
`94. Admitted.
`95. Denied.
`96. Denied.
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`COUNT III
`INFRINGEMENT OF US PATENT NO. 8,277,377
`97. Admitted.
`98. Denied.
`99. Denied.
`100. Denied.
`101. Denied.
`102. Denied.
`103. Denied.
`104. Denied.
`105. Denied.
`106. Denied.
`107. Denied.
`108. Denied.
`109. Denied.
`110. Denied.
`111. Denied.
`112. Denied.
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 9 of 21 Page ID #:4159
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`113. Denied.
`114. Denied.
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`COUNT IV
`INFRINGEMENT OF US PATENT NO. 9,801,542
`115. Admitted.
`116. Denied.
`117. Denied.
`118. Denied.
`119. Admit that the Forerunner 645 has Bluetooth and wifi capabilities, and
`that it is able to monitor heartrate and employs accelerometers. As to the remainder
`of the allegations, the link provided in Philips’ complaint results in a 404 error
`message, see below. As such, Garmin International has insufficient information to
`affirm or deny the information in said link, and therefore denies same.
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`120. The links cited by Philips do not identify specific devices. That said,
`admit that some Garmin devices monitor training status and employ EPOC, VO2
`Max, and training load. However, the Accused Products do not employ warnings or
`analyze vital parameters as those terms are employed in the ’542 Patent, to name just
`a couple of the distinctions between the Asserted Claim and the Accused Products.
`As to the remainder of the allegations, denied.
`121. Denied.
`122. Denied.
`123. Denied.
`124. Denied.
`125. Denied.
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 10 of 21 Page ID #:4160
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`126. Denied.
`127. Admitted.
`128. Denied.
`129. Denied.
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`DAMAGES
`130. Admit that Garmin has not taken a license the Patents-in-Suit. Denied
`as to remaining allegations.
`131. Denied.
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`PRAYER FOR RELIEF
`Garmin denies that Philips is entitled to any relief so requested.
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`GARMIN’S AFFIRMATIVE DEFENSES
`AFFIRMATIVE DEFENSE 1: NON-INFRINGEMENT
`35 U.S. Code § 282(b)(1)
`1.
`Garmin does not infringe any asserted claims of the Patents-in-Suit, at
`least for the reasons set forth in the positions, discovery disclosures, expert reports,
`and correspondence in this matter to date.
`2.
`The asserted claims of the ’007 Patent have been held to be invalid as
`indefinite, and Garmin cannot infringe an invalid claim. For this reason alone,
`Garmin does not infringe the asserted claims of the ’007 Patent.
`3.
`As to the asserted claims of the ’542 Patent, Philips’ expert admitted in
`deposition that the accused Firstbeat algorithm (the claimed “statistical analyzer”)
`was trained by Firstbeat, not the user.
`4.
`The Firstbeat algorithm was developed and created by Firstbeat, a
`Finnish company, in Finland (outside the United States).
`5.
`The Firstbeat algorithm was not and is not trained by the user, and is not
`trained with training data representing physiological conditions determined to be
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 11 of 21 Page ID #:4161
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`undesirable for the user. It does not generate a warning indication when the user’s
`physical condition is undesirable.
`6.
`Even further, Firstbeat invented the Firstbeat algorithm prior to the
`earliest priority date of the ’542 Patent.
`7.
`Garmin does not infringe the asserted method claims of the ‘542 Patent,
`and reiterates its intention to seek recovery of fees and costs if Philips continues to
`pursue its infringement allegations on this patent.
`8.
`Philips understands that the accused algorithm was trained in Finland.
`9.
`Garmin has repeatedly asked Philips and its counsel to drop the ’542
`Patent.
`10. As Garmin has repeatedly advised Philips when asking Philips to
`dismiss the ’542 Patent, Garmin will seek fees and costs against Philips and its
`counsel for the continued assertion of the ’542 Patent.
`11. Regarding the ’377 Patent, Philips has failed to evidence that any
`syncing occurs while exercising.
`12. The asserted method claims of the ’377 Patent relate to “interactive
`exercise monitoring,” in which “exercise-related information” including an amount
`of exercise performed as well as data indicating a physiologic status of a subject is
`received using an application on a web-enabled wireless phone (the latter “at least
`partially while the subject is exercising”) and is sent to an “internet server.”
`13. The accused Garmin products, however, do not receive or send any data
`to an internet server during exercise (“In Activity”), and Philips has failed to identify
`evidence that any syncing occurs in real-time during exercise or that a single user of
`the Accused Products has synced with the server in real-time while the user is
`exercising.
`14. Further, Philips’ expert admitted that no syncing can occur during “In
`Activity” mode.
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 12 of 21 Page ID #:4162
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`15. Philips has no evidence that any users of the Accused Products have
`actually synced while exercising.
`16. Philips has no direct evidence that the sync operation has ever occurred
`while a user is exercising. Because the accused watches cannot sync In Activity
`mode, the primary use for which the Garmin watches are employed—exercising while
`“in activity”—comprise substantial non-infringing uses.
`17. There is no justification for asserting that the accused products do not
`have substantial non-infringing uses.
`18. Regarding the ’233 Patent, none of the Accused Products are medical
`devices, and none of the Accused Products have a security mechanism as claimed in
`said patent, as set forth in Garmin’s disclosures and as confirmed by the January 19,
`2021 declaration of Philips’ expert, Dr. Martin, in the ’233 IPR is incorporated by
`reference herein.
`19. Specifically Martin testifies that “One cannot ‘govern[] information
`transmitted’ between two devices if there is no information transmitted.”
`20.
`If a user is not signed into Garmin Connect, no information can be
`transmitted between the watch and phone application (Garmin Connect).
`21. Thus, Garmin does not have a device with a security mechanism as
`claimed by the ’233 Patent.
`22. Garmin incorporates by reference the February 5, 2021 rebuttal report
`served upon Philips.
`AFFIRMATIVE DEFENSE 2: INVALIDITY
`35 U.S. Code § 282(b)(1)
`23.
` Garmin incorporates by reference the February 5, 2021 rebuttal report
`served upon Philips.
`24. One or more claims of the Patents-in-Suit are invalid and/or
`unenforceable for failing to meet one or more of the requisite conditions for
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 13 of 21 Page ID #:4163
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`patentability specified in 35 U.S.C. §§ 101, 102, 103, and/or 112, or the rules,
`regulations and laws related thereto, for at least the reasons set forth in the positions,
`discovery disclosures, expert reports, and correspondence in this matter to date.
`AFFIRMATIVE DEFENSE 3: LICENSE/RELEASE
`25. Philips’ claims against Garmin are barred, in whole or in part, by licenses
`and releases to the Patents-in-Suit granted by Philips to other third parties, which
`cover instrumentalities accused of infringement in this case such as, for example, web-
`enabled wireless phones, for at least the reasons set forth in the positions, discovery
`disclosures, expert reports, and correspondence in this matter to date.
`AFFIRMATIVE DEFENSE 4: LIMITATION ON DAMAGES AND COSTS
`26. Any potential recovery by Philips is limited by statutory damages
`limitations, including without limitation 35 U.S.C. §§ 285, 286, 287 and/or 288. For
`example, Philips has failed to mark its relevant products, such as the HealthWatch and
`HealthSuite, and has failed to enforce any requirement that its licensees mark relevant
`products as required by 35 U.S.C. 287, for at least the reasons set forth in the positions,
`discovery disclosures, expert reports, and correspondence in this matter to date.
`Garmin is not liable to Philips for any acts alleged to have been performed by Garmin
`before Garmin received actual notice of any alleged infringement of the Patents-in-
`Suit.
`
`AFFIRMATIVE DEFENSE 5: EQUITABLE DOCTRINES
`27. Philips’ claims are barred in whole or in part by the doctrines of
`prosecution estoppel, equitable estoppel, patent exhaustion, disclaimer, and/or waiver
`for at least the reasons set forth in the positions, discovery disclosures, expert reports,
`and correspondence in this matter to date.
`///
`///
`///
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 14 of 21 Page ID #:4164
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`GARMIN’S COUNTERCLAIMS
`PARTIES, JURISDICTION, VENUE
`1.
`Counterclaim Plaintiff Garmin International has two engineering
`facilities in this District.
`2.
`Counterclaim Defendant Philips North America, LLC is a Delaware
`limited liability company.
`3.
`This Court has subject matter jurisdiction over Garmin’s counterclaims
`pursuant to 35 U.S.C. § 271 et seq., and 28 U.S.C. §§ 1331, 1338, and 2201-02.
`4.
`Neither party challenges venue for this action alone.
`COUNTERCLAIM 1: INVALIDITY
`(Invalidity of the claims of each of the Patents-in-Suit pursuant to §102, 103)
`The ’007 Patent2
`5.
`The claims of each of the Patents-in-Suit are also invalid pursuant to 35
`U.S.C. §§ 102 and 103, alone or in combination.
`6.
`For example, Hingam (June 1997 issue of Adventure Cyclist) and GPS
`II+ alone or in combination anticipate and/or render obvious the claims of the ’007
`patent.
`7.
`In the UK Litigation, Koninklijke Philips N.V. accepted that GPS II+,
`Hingham, and Schultz all disclosed a product falling within the scope of claim 1 of
`EP1,076,806B1.
`8.
`The claims of EP1,076,806B1 and the asserted ’007 patent are
`indistinguishable.
`9.
`GPS II+, Hingham, and Schultz are each invalidating prior art for the
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`’007.
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`10. Philips was aware of GPS II+, Hingham, and Schultz prior to filings its
`
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`2 Garmin denies that the ’007 has been properly asserted in its SAC as it has been
`invalidated, but asserts invalidity here out of an abundance of caution.
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 15 of 21 Page ID #:4165
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`b.
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`Complaint in this matter.
`a.
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`Shultz is described in Exhibit A, Dkt. No. 23-1, ¶¶190-198,
`which is incorporated by reference herein.
`Hingham is described in Exhibit A, Dkt. No. 23-1, ¶¶199-
`204, which is incorporated by reference herein.
`GPS II+ is described in Exhibit A, Dkt. No. 23-1, ¶¶205-
`207, which is incorporated by reference herein.
`11. Garmin 45 anticipates and/or renders obvious the claims of the ’007
`patent.
`12. Philips was aware of the Garmin 45 prior to filing its Complaint in this
`matter.
`
`The ’233 Patent
`13. Garmin’s own products anticipates and/or render obvious the claims of
`the ’233 Patent.
`14. For example, Garmin’s Dynastream products anticipate and/or renders
`obvious the claims of the ’233 patent.
`15. Philips was aware of one or more of the Dynastream products before it
`filed its Complaint in this matter.
`16. A May 1998 paper from Ericsson that details the original Bluetooth
`pairing process anticipates and/or renders obvious the claims of the ’233 patent.
`17. The Ericsson paper was provided to Philips by Garmin Ltd. prior to
`Philips’ filing its Complaint in this matter.
`The ’377 Quy Patent
`18. As for the asserted ’377 patent, Philips knows the claims of that patent
`are invalid.
`19. For example, Garmin Ltd. explained the following to Philips in 2016:
`“Philips reads this patent on fitness devices that can collect a health parameter from a
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 16 of 21 Page ID #:4166
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`generic I/O port and transmit that parameter to a server. This functionality was well
`known before the filing of the Quy patent in December 1999. Garmin’s U.S. Patent
`Nos. 6,002,982 (Fry, 1996) and 5,955,667 (Fyfe, 1996) are two examples. Delman
`(WO2000078413) and Mault (WO2001039089) are two non-Garmin examples.”
`20. Each of the four patents in paragraph 46 alone or in combination
`anticipate and/or render obvious the claims of the ’377 Patent.
`21. EP 1 247 229 B1 is the European patent arising from the US provisional
`to which the asserted ’377 Patent claims priority.
`22. Philips had in its possession Quy (US App No. 13/632,771) prior to filing
`its Complaint.
`23. Philips had in its possession US Patent No. 5,955,667 prior to filing its
`Complaint.
`24. Philips had in its possession U.S. Patent Nos. 6,002,982 prior to filing its
`Complaint.
`25. Philips had in its possession Mault (WO2001039089) prior to filing its
`Complaint.
`26. Philips had in its possession Lindberg (US Patent No. 7,069,552) prior
`to filing its Complaint.
`27. Philips had in its possession Dean (WO 99/41682) prior to filing its
`Complaint.
`28. Alone or in combination, the prior art cited in paragraphs 22-27 render
`the asserted Quy claims anticipated and/or obvious.
`29. Garmin incorporates by reference its invalidity contentions as served
`upon Philips.
`30. Philips should pay Garmin International’s costs and attorney’s fees for
`asserting the Quy ’377 Patent claims.
`The ’542 Patent
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 17 of 21 Page ID #:4167
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`31. Asserted Claim 13 covers:
`a.
`A method for maintaining wellness in a user comprising the
`following steps:
`using one or more sensors physically coupled to the user and
`connected to a network, to monitor one or more vital parameters,
`providing data representative of the user's physical condition;
`analyzing the one or more vital parameters using a statistical
`analyzer, trained with training data representing physiological
`conditions determined to be undesirable for the user to analyze the
`vital parameters to determine if the physiological conditions are
`undesirable; and
`generating a warning indication when the user's physical condition
`is undesirable.
`32. Setting aside the indefinite term (“undesirable”), the asserted claims of
`the ’542 Patent are anticipated by Exhibit 15 of the deposition of Dr. Martin,
`incorporated by reference herein.
`33.
`In deposition, Dr. Martin testified as follows:
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`Q. In your opinion, are there any limitations in Claim 13 not present in the
`seizure monitor described in Exhibit 15?
`
`MR. RODRIGUES: Objection to form. Calls for speculation. Vague.
`Compound.
`
`Dr. Martin: So one of the things in the paper that you -- we didn't discuss is
`toward the end of the paper, it says it’s done offline. Let me refer back to
`that. So if you look at the last page, left column, next to last, it said, "The
`method was implemented and tested off-line." So that means they've used
`prerecorded data. They actually haven't implemented this as a warning
`system, because it’s been done offline.
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`BY MS. LAMKIN: I said, "That's helpful. Anything else?"
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 18 of 21 Page ID #:4168
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`MR. RODRIGUES: I guess I'd reiterate the same objections I stated before.
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`THE WITNESS: So not off the top of my head.
`34. Although the implementation described in Exhibit 15 was conducted
`offline, it teaches a warning would be employed.
`35. Thus, Exhibit 15 anticipates Claim 13.
`36. Garmin will add Exhibit 15 to its invalidity contentions.
`37. Setting aside the indefinite term (“undesirable”), Claim 13 is anticipated
`and/or rendered obvious by the Holter ECG, first commercially available in 1962.
`38.
`In addition to the above references, the asserted claims are anticipated
`and/or rendered obvious by each of the following publications:
`a.
`Sheppard L. C., Kouchoukos N. T., Kurtts M. A., Kirklin J. W.
`Automated
`treatment of critically
`ill patients
`following
`operation. Annals of Surgery. 1968;168(4):596–604.
`Siegel J. H., Fichthorn J., Monteferrante J., et al. Computer based
`consultation
`in
`‘care’
`of
`the
`critically
`ill
`patient. Surgery. 1976;80(3):350–364.
`Seiver A. Critical care computing: past, present, and
`future. Critical Care Clinics. 2000;16(4):601–621.
`Booth F. Patient monitoring and data processing
`ICU. Critical Care Medicine. 1983;11(1):57–58.
`“Information Technology in Critical Care: Review of Monitoring
`and Data Acquisition Systems for Patient Care and Research.”
`Information Technology in Critical Care: Review of Monitoring
`and Data Acquisition Systems for Patient Care and Research
`COUNTERCLAIM 2: INVALIDITY
`(Section 101, Patent Nos. ’007, ’233, ’542, ’377)
`
`in
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`the
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 19 of 21 Page ID #:4169
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`39. Paragraphs 1-38 are incorporated by reference herein.
`40. Each of the asserted claims are patent ineligible.
`41. By way of first example, the claims of the ’007 patent are invalid as
`drawn toward unpatentable subject matter.
`42. Claim 1 is representative.
`43. Claim 1 is drawn toward abstract subject matter and fails to contain an
`inventive step.
`44. For example, all of the modules in Claim 1 are generic and the claim
`triggers preemption concerns (GPS, means for computing, means for displaying).
`45. By way of second example, the claims of the ’233 patent are invalid as
`drawn toward unpatentable subject matter.
`46. Claim 1 is representative.
`47. As with the ’007, all of the modules of the claim are generic and trigger
`preemption concerns.
`48. Further, the system merely claims a long-standing practice of providing
`an athlete feedback based on her location. A coach standing on a hill and yelling
`running times at an athlete as she ran by performs the same functions claimed.
`49. Garmin incorporates by reference its invalidity contentions.
`50. Garmin incorporates by reference the Section 101 briefing in the Philips
`v. Fitbit matter, Case No. 1:19-cv-11586.
`COUNTERCLAIM 3: INVALIDITY
`Section 112: Indefiniteness
`51. Paragraphs 1-50 are incorporated by reference herein.
`52. One or more of the Asserted Claims are invalid as indefinite.
`53. The claims of the ’007 are invalid pursuant to Section 112. See Dkt. No.
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`102.
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`54. For example, the term “undesirable for the user” in Claim 13 of the
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 20 of 21 Page ID #:4170
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`’542 patent is indefinite pursuant to 35 U.S.C. § 112.
`JURY DEMAND
`Garmin International requests a jury trial for all issues so triable.
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`PRAYER FOR RELIEF
`Garmin International seeks the following relief:
`• A determination of non-infringement as to all asserted claims of the Patents-
`in-Suit and all Accused Products;
`• A determination that invalidity and/or ineligibility for all asserted claims of
`the Patents-in-Suit;
`• An award of attorney’s fees and costs pursuant to 35 US.C. § 285 and 28
`US.C. § 1927.
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`March 18, 2021
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`Respectfully submitted
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`_________________________
`Rachael D. Lamkin
`Attorney for Defendant
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`Garmin’s Answer to SAC
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`Case 2:19-cv-06301-AB-KS Document 127 Filed 03/18/21 Page 21 of 21 Page ID #:4171
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`CERTIFICATE OF SERVICE
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`On this date, March 18, 2021 Garmin’s Answer, Affirmative Defenses, and
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`Counterclaims were served upon Plaintiff using the Court’s ECF system.
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`___________________
`Rachael D. Lamkin
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`Garmin’s Answer to SAC
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`21
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