Case 2:19-cv-06301-AB-KS Document 132 Filed 10/18/21 Page 1 of 8 Page ID #:4211
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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
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
` Case No. 2:19-cv-06301-AB-KS
`FINAL JOINT STATUS REPORT
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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 132 Filed 10/18/21 Page 2 of 8 Page ID #:4212
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`Plaintiff Philips North America LLC (“Philips”) and Defendants Garmin International,
`Inc. and Garmin Ltd. (collectively “Garmin”) jointly file this Final Status Report in accordance
`with the Court’s Order of February 25, 2021 (Dkt. 125), which requested that the parties provide
`a “Stipulation and Proposed Order for moving the case forward.”
`The Patent Trial and Appeal Board (“PTAB”) entered a final written decision (“FWD”)
`on October 4, 2021 finding all claims asserted in this case of U.S. Patent No. 7,088,233 (“the
`’233 Patent”) unpatentable.
`The parties have met and conferred and are unable to come to an agreement with regards
`to moving the case forward with respect to U.S. Patent Nos. 8,277,377 (“the ’377 Patent) and
`9,801,542 (“the ’542 Patent”), which were not subject to any instituted IPR proceeding.
`Accordingly, the parties are submitting competing proposals as summarized below.
`PHILIPS’S PROPOSAL
`As contemplated by the Court in its order granting a limited stay through a final written
`decision in the IPR against the ’233 Patent, this case should move forward on Philips’s unrelated
`claims for infringement of the ’377 and ’542 Patent. Indeed, had the PTAB exhausted the
`statutory time limit within which to issue a final written decision, the Court’s limited stay would
`expire on November 10, 2021. (See Dkt. No. 125 at 7.) While the Court noted Garmin’s shifting
`request for a stay of “three months, an order extending the dates by nearly one year, or a stay
`generally” (Dkt. No. 125 at 7), at no time in its prior request for a stay did Garmin argue that
`any stay should last through any appeals of the PTAB’s FWD on the ’233 Patent—nor did the
`Court order such a stay. (See id.)
`Accordingly, the case should proceed on Philips’s claims that Garmin infringes the ’377
`Patent and the ’542 Patent. (See Second Amended Complaint, Dkt. No. 126.) However, in light
`of proceeding in the most efficient way possible, and to avoid potentially unnecessary expenses
`and burden on the parties and the Court were the PTAB’s final written decision on the ’233
`Patent affirmed on appeal, Philips does agree that proceedings with regard to the ’233 Patent
`should be the subject of a partial stay such that the parties need not address those claims further
`until if and when necessary to do so.
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` JOINT STIPULATION
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 132 Filed 10/18/21 Page 3 of 8 Page ID #:4213
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`Revisiting the factors the Court considered when granting a limited stay until the PTAB
`issued its FWD, no factor weighs in favor of continuing a stay of this case with respect to the
`’377 Patent and the ’542 Patent. The stage of the case is still as advanced as it was in February,
`with expert discovery nearly complete and with only dispositive motions and trial to complete,
`and the court found this factor did not weigh in favor or against a stay. (Dkt. No. 125 at 4.) The
`anticipated simplification of the issues has occurred in light of the PTAB’s FWD and Philips’s
`agreement that proceedings with regard to the ’233 Patent should be stayed, with the case
`proceeding only with regard to the ’377 Patent and the ’542 Patent. (See Dkt. No. 120 at 5; Dkt.
`No. 125 at 5.) This counsels against any further stay of the ’377 Patent and ’542 Patent. Finally,
`Philips has the right to enforce its patents and a continued stay of the ’377 Patent and the ’542
`Patent which are not encumbered or under any review or appeal is prejudicial. See IOENGINE,
`LLC v. PayPal Holdings, Inc., CV 18-452-WCB, 2020 WL 6270776, at *7 (D. Del. Oct. 26,
`2020) (collecting cases) (“the open-ended delay resulting from a stay pending a Federal Circuit
`appeal from the PTAB's decision in an IPR proceeding comes on top of the delay entailed in a
`stay pending the IPR proceeding itself, thus increasing the prejudice to the patent owner's
`interest in having its patent rights enforced on a timely basis.”).
`Finally, courts have endorsed a partial stay for a patents or claims under appeal, while
`allowing the remainder of a case to proceed to trial. See e.g., AgroFresh Inc. v. Essentiv LLC,
`CV 16-662 (MN), 2019 WL 2327654, at *3 (D. Del. May 31, 2019) (staying proceedings on
`one patent until resolution of appeal while proceeding to trial on the other two asserted patents.);
`Vivint, Inc. v. Alarm.com Inc., 351 F. Supp. 3d 1341, 1358 (D. Utah 2018) (Proceeding with the
`case, while ordering “a limited stay pending the decision of the Federal Circuit—but only as to
`the nine claims rejected by the USPTO.”); LG Elecs., Inc. v. Toshiba Samsung Storage Tech.
`Korea Corp., CV 12-1063-LPS-CJB, 2015 WL 8674901, at *7 (D. Del. Dec. 11, 2015)
`(proceeding with one patent with claims not part of the PTAB proceeding while staying case on
`second patent under appeal of FWD).
`While meeting and conferring prior to this filing, Garmin suggested that the entire case
`should be stayed (and not simply proceedings with regard to the ’233 Patent) because of the
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`JOINT STIPULATION
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`relatedness of the accused products and technology at issue, suggesting that the Court should
`therefore hold a single trial on all the patents upon exhaustion of all appeals with regard to the
`’233 Patent. However, Garmin overstates any such “relatedness” between the ’233 Patent and
`the ’377 Patent and ’542 Patent. The principal issue on any appeal of the PTAB’s FWD on the
`’233 Patent will be the meaning of the term “security mechanism governing information
`transmitted” on which the PTAB’s FWD rests. That term does not appear in either the ’377 and
`’542 patents, and none of the presently asserted patents are from the same patent family. There
`is no logical reason to stay proceedings across all the asserted patents simply because of overlap
`in the product accused of infringement—particularly where, as here, fact discovery closed long
`ago and expert reports have been served.
`Garmin also argues that the claims of the ’233 Patent should be dismissed due to the
`PTAB’s final written decision. However, there is no conceivable basis for such a dismissal.
`First, Garmin has not filed a Motion to Dismiss. Second, there would be no basis for granting
`such a motion. The PTAB’s “Final Written Decision,” its title notwithstanding, is actually a
`non-final order by an administrative agency that remains subject to appeal to the Federal Circuit.
`Accordingly, the decision has no preclusive effect. See Trustid, Inc. v. Next Caller Inc., No. 18-
`172, 2021 WL 3015280, at *3 (D. Del. July 6, 2021) (“IPR decision is not ‘final’ for purposes
`of issue preclusion.”). Indeed, Plaintiffs have obtain damages awards on patents found
`unpatentable by the PTAB while an appeal of such a decision was pending (though Philips is
`not advocating for that approach here, instead suggesting the approach many other courts have
`taken by applying a partial stay). See VirnetX Inc. v. Apple, Inc., No. 6:12-cv-00855-RWS, 2021
`WL 1941740, at *5 (E.D. Tex. Jan. 15, 2021). It is also worth noting, as the Court in VirnetX
`did, that no claims of the ’233 Patent will be cancelled until all appeals have been exhausted.
`See 35 U.S.C. § 318(b) (“If the Patent Trial and Appeal Board issues a final written decision
`under subsection (a) and the time for appeal has expired or any appeal has terminated, the
`Director shall issue and publish a certificate canceling any claim of the patent finally determined
`to be unpatentable....”) (emphasis added).Philips proposes proceeding with the below case
`schedule, which sets forth the parties agreed schedule for move the case forward on the ’377
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`JOINT STIPULATION
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`Case 2:19-cv-06301-AB-KS Document 132 Filed 10/18/21 Page 5 of 8 Page ID #:4215
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`Patent and the ’542 Patent, which is also set forth in the accompanying proposed order.
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`GARMIN’S PROPOSAL
`The asserted claims of the ’233 Patent have been invalidated in a Final Written Decision.
`The ’233 Patent should be dismissed from the case with prejudice for it to proceed, as the Court
`noted: “[i]f the six claims of the ’233 patent do not survive review, it would eliminate the need
`for trial [on those claims]”. Dkt. No 125, at 5 (quoting Semiconductor Energy Lab. Co., Ltd. v.
`Chimei Innolux Corp., No. 8:12-cv-00021 JST (JPRx), 2012 WL 7170593, at *2 (C.D. Cal.
`Dec. 19, 2012). Garmin sees no good faith basis for Philips’ suggestion that the parties should
`continue to litigate claims that have been invalidated, a decision very likely to be upheld on
`appeal1, and has asked Philips to dismiss the ’233 Patent so that the matter may proceed. Philips
`denied Garmin’s request.
`As such, Garmin believes that the stay should remain in effect until Philips’ appeal has
`concluded: “waiting for the conclusion of the pending appeals and PTAB decisions advances
`the court’s and parties’ interests in avoiding unnecessary expenditure of resources.” Realtime
`Data LLC v. Silver Peak Sys., No. 17-cv-02373-PJH, 2018 U.S. Dist. LEXIS 133041, at *5-6
`(N.D. Cal. Aug. 7, 2018). “Still worse, the court would have to duplicate its efforts and
`potentially conduct multiple trials if claims deemed non-patentable today are later found to be
`patentable—a loss of efficiency compounded when the patents are related and involve
`overlapping witnesses, experts, or evidence.” Id; see also Baxter Healthcare Corp. v. Becton,
`Dickinson & Co., No. 3:17-cv-2186 JLS-RBB, 2021 U.S. Dist. LEXIS 412, at *10 (S.D. Cal.
`Jan. 4, 2021). The reasoning of the Court’s order staying the entire case continues to apply here.
`Instead, for the third time, Philips asks this Court and the Garmin Defendants to try the
`case in piecemeal fashion; that is, for the third time, Philips asks this Court and the defendants
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`1 “In IPR appeals, the Federal Circuit affirmed the PTAB on every issue in 602 (73.87%) cases and
`reversed or vacated the PTAB on every issue in 105 (12.88%) cases. A mixed outcome on appeal,
`where at least one issue was affirmed and at least one issue was vacated or reversed, occurred in 80
`(9.82%) cases.” https://www.finnegan.com/en/insights/blogs/at-the-ptab-blog/federal-circuit-ptab-
`appeal-statistics-through-april-30-2021.html
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`JOINT STIPULATION
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 132 Filed 10/18/21 Page 6 of 8 Page ID #:4216
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`it has sued to incur the massive costs associated with multiple trials over similar patents using
`the same experts and overlapping accused products. Even though, on multiple occasions, this
`Court has ruled that the asserted patents are sufficiently related that they should be tried together.
`See Order, Dkt. No. 118, at 3 (“The patents are all utilized across the same allegedly infringing
`products and involve electronic monitoring of athletes—facts that Plaintiffs also recognize as
`true. Given the overlap in subject matter, the Court is not inclined to separate the claims and risk
`the Federal Circuit considering the same products, subject matter, and issues more than once.”);
`see also Dkt. Nos. 125, at 5; 102, at 2.
`Philips does not even try to argue that it will be prejudiced by a continued stay because
`none can be shown. For example, each of the remaining three patents have expired. And, as this
`Court has found, “[t]he Court observes that the extended passage of time in this case has been
`driven in large part by the parties’ ongoing stipulations to extend deadlines[.]”. Dkt. 125, at 4.
`Philips has chosen to maintain invalidated claims against Garmin, and Philips has chosen to
`appeal the IPR invalidating all asserted ’233 Patent’s claims. As such, Philips should not be
`heard to object to a continued stay of the matter while it pursues its appeal of the ’233 Patent.
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`JOINT PROPOSED SCHEDULE IF STAY NOT CONTINUED
`If the stay is not continued, the Parties propose the following schedule:
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`Event
`Close of Expert
`Discovery
`Dispositive Motion
`Filing Deadline
`Oppositions to
`Dispositive
`Motions
`Replies on
`Dispositive
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`Joint Proposed Schedule
`December 17, 2021
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`February 17, 2022
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`March 10, 2022 (LR 7-3(a))
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` March 17, 2022 (LR 7-3(c))
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`JOINT STIPULATION
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 132 Filed 10/18/21 Page 7 of 8 Page ID #:4217
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`Motions
`Hearing on
`Dispositive
`Motions
`First Round of
`Pre-Trial Filings
`Due
`Second Round of
`Pre-Trial Filings
`Due
`Final Pretrial
`Conference
`Trial
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`June 10, 2022, or as convenient for the Court.
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`August 15, 2022, or as convenient for the Court.
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`September 5, 2022, or as convenient for the Court.
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`September 16, 2022, or as convenient for the Court.
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`October 7, 2022
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`Dated: October 18,2021
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`LAMKIN IP DEFENSE
`
`/s/ Rachael D. Lamkin
`Rachael D. Lamkin (246066)
`LAMKIN IP DEFENSE
`One Harbor Drive, Suite 300
`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.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`(913) 777-5600 Telephone
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`
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`Respectfully submitted,
`
`FOLEY & LARDNER LLP
`
`/s/ Jean-Paul Ciardullo
`Jean-Paul Ciardullo, CA Bar No. 284170
` jciardullo@foley.com
`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
`321 N. Clark Street, Suite 2800
`Chicago, IL 60654-5313
`Telephone: 312-832-4359
`Facsimile: 312-83204700
`
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`JOINT STIPULATION
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 132 Filed 10/18/21 Page 8 of 8 Page ID #:4218
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`(913) 777-5601 Facsimile
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`Lucas I. Silva (pro hac vice)
` lsilva@foley.com
`Ruben J. Rodrigues (pro hac vice)
` rrodrigues@foley.com
`111 Huntington Avenue, Suite 2500
`Boston, MA 02199-7610
`Telephone: (617) 342-4000
`Facsimile: (617) 342-4001
`
`Attorneys for Plaintiff
`Philips North America LLC
`
`I certify that Rachael D. Lamkin authorized the electronic filing of this document.
`/s/ Jean-Paul Ciardullo
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`JOINT STIPULATION
`CASE NO. 2:19-cv-06301-AB-KS
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