Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 1 of 22 Page ID #:5686
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`Rachael D. Lamkin (246066)
`LAMKIN IP DEFENSE
`RDL@LamkinIPDefense.com
`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
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`Attorneys for Defendants
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`
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`Case No. 2:19-cv-06301-AB (KSx)
`
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`DEFENDANTS’ MOTION FOR
`SUMMARY JUDGMENT OF
`NON-INFRINGEMENT, PATENT
`INELIGIBILITY, AND
`INVALIDITY
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`Hearing: April 15, 2022, 10:00 am
`
`Hon. André Birotte Jr.
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`Garmin SJ Motion
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`Philips North America, LLC,
`
`Plaintiff, Counterclaim-Defendant
`
`v.
`
`
`Garmin International, Inc. and Garmin
`LTD
`
`Defendants, Counterclaimants
`
`
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`

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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 2 of 22 Page ID #:5687
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`I.
`
`INTRODUCTION
`Initially, Philips asserted six patents. Dkt No. 45, ¶48. Of those six, two have
`been invalidated, and two have been voluntarily withdrawn by Philips. Two patents
`currently survive, US Patent Nos. 9,801,542 and 8,277,377. Regarding non-
`infringement, a mere two claims remain before this Court, Claim 13 of the ’542 and
`Claim 1 of the ’377.
`Claim 13 of the ’542 Patent requires the “statistical analyzer” to be trained with
`the particular end-user’s own data. Claim Construction Order, Dkt. No. 102, at 41.
`Philips’ expert admitted in deposition that the alleged statistical analyzer in the
`accused Garmin watches is not trained by end-user’s own data but was in fact trained
`in Finland by 158 men and women as part of developing the “statistical analyzer”.
`(UF¶¶1-2, 4-6.1) Based on this Court’s Claim Construction Order and Philips’ own
`admissions, Garmin does not infringe the claims of the ’542 Patent.
`As to the ’377 Patent, the claim requires the phone application to receive
`“physiologic status” data from Garmin’s watches while the user is exercising. ’377,
`13:39-41, Claim Construction Order, Dkt. No. 102, at 34. If a Garmin athlete wants
`to monitor her physiologic status while exercising, she can just look at her watch
`instead of the application on her phone, an act which is non-infringing without dispute.
`(UF¶¶8-9, 16.) The accused Garmin watches are designed to block the syncing of all
`data being sent between the watch and the phone application/servers during exercise,
`a requirement of every claim. (UF¶¶10-12.) Instead of dropping the ’377, Philips
`rests its entire case on the hope that some Garmin athlete might use Garmin’s watches
`in a manner exactly contra their design and contra Garmin’s instructions for use. But
`the asserted claims are method claims. As such, Garmin can only be liable if: (1)
`someone actually performs the claimed method; and (2) Garmin intended its users to
`
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`1 Separate Statement of Undisputed Facts, ¶¶1-2, 4-6.
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`Garmin SJ Motion
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 3 of 22 Page ID #:5688
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`perform the claimed method. Philips has failed to make either showing.
`Materially, the only “intent to induce infringement” evidence cited by Philips
`demonstrates the opposite; Garmin has no intent for its customers to use its highly
`sophisticated training watches in a manner other than designed and instructed.
`Regarding Section 101 patent eligibility, the claims of the ’377 have already
`been found to be abstract by one court and, “[t]he fact that many of these technologies
`were well-known can be discerned from [the] patent[] [itself]”. Secured Mail Sols.,
`LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir. 2017).
`Finally, the claims of the ’542 Patent are invalid because the disclosure of the
`’542 was actually copied from another patent that predates the ’542.
`II. LEGAL AUTHORITY
`Summary judgment is appropriate when “there is no genuine dispute as to any
`material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ.
`P. 56(a). A fact is “material” if it “might affect the outcome of the suit under the
`governing law,” and a dispute as to a material fact is “genuine” if there is sufficient
`evidence for a reasonable trier of fact to decide in favor of the nonmoving party.
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202
`(1986). The moving party bears the initial burden of demonstrating the absence of a
`genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct.
`2548, 91 L. Ed. 2d 265 (1986). For issues where the opposing party has the burden of
`proof, the moving party need only point out “that there is an absence of evidence to
`support the nonmoving party’s case.” Id. at 325. The burden then shifts to the
`nonmoving party to set forth, by affidavit or as otherwise provided in Rule 56,
`“specific facts showing that there is a genuine issue for trial.” Liberty Lobby, 477 U.S.
`at 250 (internal quotation marks omitted). Summary judgment is mandated “against a
`party who fails to make a showing sufficient to establish the existence of an element
`essential to that party’s case, and on which that party will bear the burden of proof at
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 4 of 22 Page ID #:5689
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`trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 91 L. Ed. 2d 265
`(1986).
`
`III. NONE OF THE ACCUSED PRODUCTS INFRINGE PHILIPS’
`REMAINING TWO INDEPENDENT CLAIMS
`Two independent claims remain asserted in this case: Claim 13 of the ’542 and
`Claim 1 of the ’377. Because Garmin does not infringe those two independent claims,
`Garmin cannot infringe any of the remaining dependent claims. Wahpeton Canvas
`Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989).
`A. Garmin Does Not Infringe the ’542 Patent
`There is only one independent claim at-issue, and that claim is a method claim:
`13. A method for maintaining wellness in a user comprising the following
`steps:
`
`a. 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;
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`b. 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
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`c. generating a warning indication when the user’s physical condition is
`undesirable.
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`The claim requires “using a statistical analyzer, trained with training data
`representing physiological conditions determined to be undesirable for the user.”
`’542, 76:17-19 (emphasis added). At claim construction, Garmin argued that the
`requirement that the physiological conditions be “undesirable for the user” rendered
`the claim indefinite. See, e.g., Dkt. No. 75, at 23-25; id. at 24 (arguing
`“‘[u]ndesirability’ will differ from person to person, based on the user-specific data
`used to train the claimed ‘statistical analyzer.’”). The Court disagreed, finding the
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 5 of 22 Page ID #:5690
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`claim to be sufficiently definite because “the user” in the claim referred to the specific
`user and a “particular patient”:
`Of note, Defendants have not cited any evidence to show that persons of skill
`in the art would disagree as to what is “desirable” for a particular patient, when
`that term is considered in the context of health monitoring and a person of skill’s
`respective knowledge of correlations between a particular type of data and a
`particular medical condition. . . . Moreover, Defendants’ example that two
`patients could have identical blood pressure readings, but that those readings
`could be identified as desirable and undesirable: (1) is inapposite to the claim
`language specifying a parameter is “undesirable for the user” (i.e., a singular
`user) and (2) is unsupported by any evidence or expert testimony.
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`Claim Construction Order, at 41 (bold in the original; underline added).
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`The Court also found: “In light of these disclosures, Defendants have not shown
`by clear and convincing evidence that one of skill in the art in health monitoring could
`not determine what would be undesirable for a patient, given the patient’s individual
`characteristics.” Claim Construction Order, at 41
`
`Garmin’s accused watches are not medical devices, or health monitoring
`devices, and Garmin’s users are not “patients”. See id. Nor do Garmin watches train
`any statistical analyzer with a particular patient’s data.
`Under Philips’ infringement theory, “the user” in the claim is the “particular
`patient” using the accused watch. (UF¶3.) Under well-established law, “the user”
`throughout the claim must be the same user. X One, Inc. v. Uber Techs., Inc., 440 F.
`Supp. 3d 1019, 1034 (N.D. Cal. 2020) (“The Court agrees with Uber that all three
`instances of ‘map’ [in the claim] refer to the same map.”); see also id., at 1034
`(collecting cases); Howlink Glob. LLC v. Network Communs. Int'l Corp., 561 F. App’x
`898, 903 (Fed. Cir. 2014) (terms with an “antecedent basis” [“a user” followed by “the
`user”] “carry the same meaning throughout the claims.”)
`
`As such, the “statistical analyzer” in the claim was trained by the “particular
`patient” wearing an accused device. Claim Construction Order, at 41 (“the claim
`language specif[ies] a parameter is “undesirable for the user” (i.e., a singular user)”)
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 6 of 22 Page ID #:5691
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`(emphasis in the original); ’542, at 76:17-19 (“using a statistical analyzer, trained with
`training data representing physiological conditions determined to be undesirable for
`the user.”) (emphasis added).
`
`Philips’ own expert admits that the alleged “statistical analyzer” in the accused
`watches was not trained with data from the user. (UF¶¶4-5.) In fact, Philips’ expert
`admits that the statistical analyzer was pre-trained by one hundred and fifty-eight
`(158) people in Finland before the accused devices are ever sold to “the user” in the
`United States. (UF¶¶1-2, 5-6.)
`
`Assuming arguendo that Garmin’s watches had a “statistical analyzer,” any
`alleged “statistical analyzer” was pre-trained in Finland by 158 people, and not
`Garmin’s customer. Garmin cannot infringe Claim 13, which requires that the
`statistical analyzer be trained by the “particular patient” end-user: ’524, at 76:17-19;
`Claim Construction Order, at 41.
`B. Garmin Does Not Infringe the ’377 Patent
`Regarding the ’377 Patent, there is only one independent claim at-issue, method
`Claim 1. Thus, if Philips has failed to show that any entity or person performed each
`step of the claimed method, this Court must find that Garmin does not infringe.
`1) Philips Has Failed to Evidence that Any Person or Entity Directly
`Infringes Limitation (f)(ii)
`Garmin cannot be held an infringer for selling devices that are merely allegedly
`capable of performing the claimed steps. Philips must prove that someone actually
`performed all steps of the method claim. Ericsson, Inc. v. D-Link Sys., 773 F.3d 1201,
`1221 (Fed. Cir. 2014) (“the direct infringer must actually perform the steps in the
`method claim.”) (emphasis in the original; collecting cases); see also Ormco Corp. v.
`Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006) (“Method claims are only
`infringed when the claimed process is performed, not by the sale of an apparatus that
`is capable of infringing use.”); Adaptix, Inc. v. Apple, Inc., 78 F. Supp. 3d 952, 955
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 7 of 22 Page ID #:5692
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`(N.D. Cal. 2015). Here, Philips has failed to evidence that anyone ever used the
`accused Garmin watches in an infringing manner.
`Philips accuses the “sync” function because when the accused Garmin watches
`“sync” with the phone application and Garmin’s servers, data is sent from the watch
`to the phone application, to Garmin’s servers, and back to the phone application.
`(UF¶¶12,15.) But, Claim 1 also requires that data be sent in real time, while the user
`is exercising. Claim Construction Order, at 34. Something that does not happen, by
`design, in the Garmin system.
`The accused Garmin watches collect two types of data: (1) all day data such as
`steps taken; and (2) exercise training (“Activity”) data. (UF¶25.) Both types of data
`get sent from the watch to the phone application to Garmin’s servers and back to the
`application when the watch and phone application/server perform a “sync”.2
`Limitation (f)(ii) requires the accused Garmin watch to send “data indicating a
`physiological status of the subject . . . while the subject is exercising”. ’377, 13:39-
`41.
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`The accused devices track the user’s exercise through the “Activity” mode.
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`“start” in Activity mode
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`2 Or if the Garmin customer chooses not to use his watch with a phone, as many do,
`the athlete’s data gets sent to Garmin’s servers via WiFi or via a USB connected to a
`desktop computer. (UF¶¶63-68.) None of these latter uses are even accused of
`infringement as they don’t involve a phone application.
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 8 of 22 Page ID #:5693
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`When a Garmin customer wants to train, she selects the Activity (e.g., a treadmill run)
`and then pushes start to place the watch “in Activity” mode. When she is done
`working out, she selects “end” and can, if she wants, save the workout, which is then
`sent to Garmin’s servers in one of four ways (WiFi, USB, phone application, or
`ANT+). (UF¶63.)
`It is undisputed that the watch cannot send, i.e., is designed to block, all syncing
`of data between the watch and server/application while the user is exercising in
`Activity mode. (UF¶¶10-11.) As Philips’ own cited evidence makes clear, a sync can
`occur only after the exercise is completed:
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`(Philips’ Infringement Contentions, e.g., Claim 24, at 18, Garmin “automatically
`sends your activity to you Garmin Connect account as soon as you finish the
`activity.”)
`As such, Philips’ rests its entire case on the hope that some user might choose
`to exercise but do so without placing the watch in Activity mode, thereby losing all of
`the valuable training data collected when the watch is in Activity mode. (UF¶¶51-
`62.) Philips has no evidence that any user has ever chosen to exercise out of Activity
`mode. (UF¶¶21-24.)
`Philips speculates that some users might “exercise” without utilizing the
`“Activity” mode that was specifically designed to track exercise. Lamkin Decl, Exh
`C, Martin Rpt., at ¶201. Philips has no evidence of that ever occurring. (UF¶¶21-24.)
`Second, Philips imagines that someone might end their Activity but keep exercising.
`Id., ¶207. Again, Philips has no evidence of that ever occurring. (UF¶¶21-24.) And,
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 9 of 22 Page ID #:5694
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`neither scenario makes sense. The whole purpose of training with a Garmin watch is
`to obtain the rich training data tracked and analyzed when one trains “in Activity”
`mode. For example, running speed, miles ran, Vo2 Max, Training Status, Training
`Load, to name a few. None of this valuable data is collected, stored, and analyzed
`unless the athlete trains in Activity mode. (UF¶¶51-62.) Philips’ expert, Dr. Martin,
`concedes that his imagined use, exercising but not placing the watch in Activity mode,
`robs the user of most of the valuable feedback data. (UF¶51; see also ¶¶52-62.)
`Further, Philips brushes over the requirement of limitation (f)(ii), which
`requires the accused Garmin watch to send “data indicating a physiological status of
`the subject . . . while the subject is exercising”. ’377, 13:39-41. Assuming arguendo
`that something like heart rate can be considered “data indicating a physiologic status
`of the subject,” upon a sync, the heart rate data sent from the watch to the phone
`application/server contains all of the heart rate data since the last sync. The sync data
`is batched data, sending all data collected since the last sync. (UF¶15.) There is no
`data sent between the watch and application/server that indicates the current (during
`exercise) physiological status of the subject. Synced data is by definition and function
`historical data. (Id.)
`As such, Philips cannot point to a single end-user who has actually misused the
`accused Garmin devices in a way that meets limitation (f); i.e., one user who was
`exercising—without putting the watch in exercise mode—while the watch and the
`phone application synced. See Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1329 (Fed.
`Cir. 2010) (in the context of method claim, “the manuals and expert testing only show
`that the products are capable of infringing, they do not provide evidence of direct
`infringement”). And no Garmin athlete would because if a Garmin athlete wants to
`see her heart rate in real time, she can just look at her watch, which displays her heart
`rate in real time as she exercises. (UF¶¶8,16.) No athlete would stop her run, save
`her training data, perform a sync, and then wait for the data to return to her phone
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`application if one wants real time data during exercise. That’s not real time data during
`exercise; she’s done. Real time data is shown on the watch while you run. (UF¶¶8,16.)
`Here, Fujitsu is guiding if not controlling. In Fujitsu, Philips asserted
`infringement of a method claim on the basis that a customer could choose to activate
`an infringing option. Fujitsu, at 1328. Finding that the “default” mode of the accused
`products did not infringe, the district court granted summary judgment of non-
`infringement because the allegedly infringing option was “not a requirement” of the
`product’s operation. Id. Affirming the district court, the Federal Circuit held, “it is
`not enough to simply show that a product is capable of infringement; the patent owner
`must show evidence of specific instances of direct infringement.” Id. at 1329.
`The same finding is warranted here. Even assuming arguendo that a customer
`could be capable of using Garmin’s devices in a manner other than designed and in a
`manner never taught by Garmin, this does not trigger liability for infringement of
`method claims. See Fujitsu, at 1329; see also E-Pass Techs., Inc. v. 3Com Corp., 473
`F.3d 1213, 1222-23 (Fed. Cir. 2007). “[C]onjecture as to what consumers are capable
`of doing with Defendant’s products is simply not a specific instance of infringement.”
`Action Star Enter. Co. Ltd. v. Kaijet Tech. Int'l Ltd., No. CV 12-08074 BRO (MRWx),
`2014 U.S. Dist. LEXIS 186392, at *21 (C.D. Cal. Apr. 18, 2014) (citing Jujitsu).
`Indeed, Garmin’s position is even stronger than the defendant in Fujitsu because in
`that case, Philips could point to instruction manuals advising how to use the device in
`an infringing manner. Here, Garmin does not instruct its customers to use the accused
`devices in a manner contra their design. See Martin Depo Tr., 168:6-175:6 (expert
`unable to point to any evidence of Garmin instructing its customers to use their
`watches in an infringing manner) (Lamkin Decl., Exh B.)
`Finally, E-Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1222 (Fed. Cir.
`2007) is informative if not controlling. In E-Pass, the Federal Circuit affirmed
`summary judgment of non-infringement as direct infringement could not be inferred
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 11 of 22 Page ID #:5696
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`from circumstantial evidence: “Nowhere do the manual excerpts teach all of the steps
`of the claimed method together[.] Accordingly, it requires too speculative a leap to
`conclude that any customer actually performed the claimed method.” Id. The same
`result should be found here.
`As with Fujitsu, Garmin’s position is even stronger than the defendant in E-
`Pass because Philips cannot point to an instruction from Garmin advising its
`customers to exercise with a Garmin watch but to exercise when not in Activity mode.
`(UF¶¶21-24, 27.) Such a recommendation would be non-sensical because (1) the
`Garmin athlete would lose all of the important training data only stored and analyzed
`when gathered in Activity mode; and (2) the athlete can see real time data just by
`looking at her watch during exercise. “Hypothetical instances of direct infringement
`are insufficient[.]” ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1313
`(Fed. Cir. 2007).
`2) No Specific Intent To Induce Infringement
`Because Philips has failed to evidence direct infringement, its indirect
`infringement allegations fail as a matter of law. Limelight Networks, Inc. v. Akamai
`Techs., Inc., 572 U.S. 915, 920, 134 S. Ct. 2111, 2116 (2014) (“there can be no
`indirect infringement without direct infringement.”) That is, Philips’ case should
`end here.
`But even if Philips had found some person who used a Garmin watch in the
`manner it imagines—it didn’t—Garmin would still not be liable unless Philips proves
`that Garmin intended its users to misuse its watches. Vita-Mix Corp. v. Basic Holding,
`Inc., 581 F.3d 1317, 1329 (Fed. Cir. 2009). This just makes sense; it would be unjust
`to hold a manufacturer liable for a customer’s use of its products unless it can be
`shown that the manufacturer told its customers to use the products in an infringing
`manner.
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 12 of 22 Page ID #:5697
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`To hold Garmin liable for “indirect infringement;” i.e., liable for the actions of
`its customers, Philips must show that Garmin specifically encourages its customers to
`use their watches to exercise, without putting the watch in exercise (Activity) mode,
`and to sync an accused device while exercising. Philips does not even try to satisfy
`this burden. Instead, Philips points to four irrelevant product features which
`purportedly encourage users to “exercise with their paired smartphone in range of” an
`accused device. Lamkin Decl., Exh C, Martin Rpt. ¶¶266-267 (citing the “audio
`prompt,” “Music Control,” “Bluetooth Notifications During Activity,” and
`“Livetrack” features).
`Dr. Martin misunderstands the products upon which he opines. None of these
`features encourage, let alone identify, Philips’ hypothetical use case where a user
`decides to exercise without starting an Activity.
`The cited “audio prompt” only works when the athlete is “in Activity” mode;
`i.e., only when the watch is used in an admittedly non-infringing manner. (UF¶41.)
`Further, the very user manuals selectively quoted by Philips make clear, “you can
`enable audio prompts on the device through your connected headphones, without
`using a connected smartphone.” Lamkin Decl., Exh G, Forerunner 245, at 4.
` The “Music Control” instructions cited by Philips is a snippet of the
`Forerunner 245 Manual that explains a user can control music on her phone using her
`watch. That functionality has nothing to do with the asserted claims and, again, the
`exact same Manual explains that a user can leave her phone at home and listen to
`music stored on her watch: “On a Forerunner® 245 Music device, you can download
`audio content to your device from your computer or from a third-party provider, so
`you can listen when your smartphone is not nearby.” Lamkin Decl., Exh G,
`Forerunner 245, at 46.
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 13 of 22 Page ID #:5698
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`“Bluetooth Notifications During Activity,” are exactly that, notifications when
`the user is “in Activity” mode (non-infringing).3
`Finally, “LiveTrack” is a safety feature that allows a loved one to track an
`athlete while he is training. LiveTrack only works when the user is in Activity.
`(UF¶31.)
`In sum, Dr. Martin’s cited evidence stands for the exact opposite proposition
`than he intends; Garmin intends its athletes to train “in Activity”. That is, Garmin
`intends its athletes to use their watches as designed and in a manner that collects and
`analyzes rich training data. It is undisputed that training while in Activity mode is not
`infringing because, again, Garmin designed the watch not to send training data (not to
`sync) while exercising. See Takeda Pharm. U.S.A., Inc. v. W.-Ward Pharm. Corp.,
`785 F.3d 625, 632 (Fed. Cir. 2015) (“Vague label language cannot be combined with
`speculation . . . to find inducement.”)
`Indeed, Garmin has produced considerable market documentation showing
`customers want to train with Garmin watches but leave their phones at home (UF¶32),
`which is why Garmin watches contain music and LTE (cellular) capabilities.
`Materially, Garmin designed its watches to provide real time training data to
`athletes while they are exercising i.e., if an athlete wants to monitor her training in
`real time, she merely looks at her watch. (UF¶¶8-9, 16.) It makes no sense to stop
`training, sync the phone and watch, wait for the data to be sent to the application, the
`server, back to the application, and then to look at the batched, historical data on the
`phone application. That is not real time data while exercising.
`Using the watch as it was designed, a Garmin athlete has all of the data he
`wants, real time data on the watch while in Activity, and rich training analytics
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`3 A Garmin athlete can also choose to receive notifications when not “in Activity”
`mode but, again, a phone is not necessary to receive training prompts from the
`watch. (UF¶19.)
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 14 of 22 Page ID #:5699
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`computed by Garmin’s servers when the athlete has competed his workout and the
`phone and application have performed a sync. (UF¶¶39-62.) Similarly, users can use
`Garmin’s products without a smartphone (UF¶¶63-68), and can transfer data to
`Garmin service’s using Wi-Fi or a USB cable (UF¶63). None of these uses have
`anything to do with the asserted claims and further negate any intent to induce
`infringement. Vita-Mix, 581 F.3d, at 1329.
`You cannot hold a manufacture liable because a patent holder fantasizes that
`one of defendant’s customers allegedly chooses to use its products in a manner other
`than advised. Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1329 (Fed. Cir. 2010);
`HZNP Meds. LLC v. Actavis Labs. UT, Inc., 940 F.3d 680, 702 (Fed. Cir. 2019).
`3) No Contributory Infringement Due To Substantial Non-
`Infringing Uses
`Like its inducement claim, Philips’ contributory infringement claim similarly
`fails. To establish contributory infringement liability, Philips has the burden to show,
`among other things, that the accused products have no substantial non-infringing uses.
`35 U.S.C. § 271(c); Toshiba, 681 F.3d, at 1363. As established above, Philips cannot
`show the absence of substantial non-infringing uses, e.g., when Garmin’s products are
`operated as intended, it is undisputed that there is no infringement. And when
`Garmin’s devices are used without a phone application, as they are designed to do, it
`is undisputed that there is no infringement. Philips’ contributory infringement claim
`fails as a matter of law. AntiCancer, Inc. v. Fujifilm Med. Sys. U.S.A., Inc., No. 09-
`cv-1311-GPC (JMA), 2013 WL 947397, at *10 (S.D. Cal. Mar. 12, 2013) (granting
`summary judgment of no contributory infringement of a method claim where plaintiff
`failed to evidence the lack of substantial non-infringing uses).
`IV. THE ’377 PATENT IS INVALID BECAUSE IT IS DIRECTED TO PATENT
`INELIGIBLE SUBJECT MATTER UNDER 35 U.S.C. § 101
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`Case 2:19-cv-06301-AB-KS Document 145 Filed 02/26/22 Page 15 of 22 Page ID #:5700
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`The Supreme Court in Alice set forth the familiar two-step test “for
`distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas
`from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty.
`Ltd. v. CLS Bank. Int.’l, 134 S. Ct. 2347, 2355 (2014).
`A. The Asserted Claims Are Directed To An Abstract Idea
`Claim is directed to the idea of collecting, analyzing, and displaying data in real
`time. Ideas found to be abstract again and again. See CardioNet, LLC v. InfoBionic,
`Inc., 816 F. App'x 471, 475 (Fed. Cir. 2020); Electric Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350, 1353-54 (Fed. Cir. 2016); Content Extraction & Transmission LLC v.
`Wells Fargo Bank, National Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Philips N.
`Am., LLC v. Fitbit, Inc., Civil Action No. 19-11586-FDS, 2021 U.S. Dist. LEXIS
`150080, at *13 (D. Mass. Aug. 10, 2021). In fact, Claim 1 of the ’377 is
`indistinguishable from Claim 12 in the Electric Power case, wherein the Federal
`Circuit affirmed a finding of patent ineligibility. See Elec. Power Grp., 830 F.3d, at
`1351; Philips N. Am., LLC v. Fitbit, Inc., Civil Action No. 19-11586-FDS, 2021 U.S.
`Dist. LEXIS 150080, at *13 (D. Mass. Aug. 10, 2021).
`The asserted claims of the ’377 Patent have already been held to be directed to
`an “abstract idea” under step 1 of the Alice test. Philips North Am. LLC v. Fitbit, Inc.,
`No. 1:19-cv-11586-FDS, 2021 WL 3516487, at *5, 2021 U.S. Dist. LEXIS 150080,
`at *16 (D. Mass. Aug. 10, 2021).
`In co-pending litigation, the District of Massachusetts court determined that
`Claim 1 of the ’377 Patent is “directed to the abstract concept of collecting, analyzing,
`and displaying exercise-related information.” Id. at *6. The court explained that
`Claim 1 “recites nothing more than the collection, analysis, and presentation of
`information, which have been found—individually and collectively—to be abstract
`concepts.” Id. at *5-6 (collecting cases). Further, the claim “does not recite ‘inventive
`technology for performing those functions.” Id. at *5. 10. Accordingly, the claims
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`were held to be directed to an abstract idea. Garmin seeks the same correct conclusion
`here.
`B. The Asserted Claims Contain No Inventive Concept
`The District of Massachusetts has not yet determined whether t