`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 1 of 22 Page ID #:208
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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, Inc.
`
`
`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`DEFENDANT GARMIN INTERNATIONAL, INC.’S ANSWER,
`AFFIRMATIVE DEFENSE, AND COUNTERCLAIM
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`
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`Pursuant to Federal Rule of Civil Procedure (“Rule”) 8(b), Defendant Garmin
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`International, Inc. (“Garmin”) waives service of process by this appearance, answers
`Plaintiff’s Complaint, Dkt. No. 1, and asserts its affirmative defense and
`counterclaim. The moniker “Garmin” specifically excludes Defendants Garmin
`USA, Inc. and Garmin Ltd. Garmin USA and Garmin Ltd. have not been served, do
`not waive service, contest jurisdiction and venue, and take no part in this Answer.
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`Garmin objects that the great bulk of Philips’ Complaint violates Rules 8(a)
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`DEFENDANT’S ANSWER
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`1
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`Case No. 2:19-cv-06301-AB (KSx)
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`DEFENDANT GARMIN
`INTERNATIONAL, INC.’S
`ANSWER, AFFIRMATIVE
`DEFENSE, AND
`COUNTERCLAIM
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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., Garmin USA,
`and Garmin LTD
`
`
`Defendants.
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 2 of 22 Page ID #:209
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`and 10(b). Garmin has made a good faith attempt to answer the 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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`
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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 infringement and that an injunction is proper.
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`2.  
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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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`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 it was founded in 1989 as ProNav, Inc. and that it
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 3 of 22 Page ID #:210
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`offered devices for navigation, including GPS-based products. Denied as to the
`other allegations in this paragraph.
`10.   Admit that Philips has tried to persuade Garmin to take a license to
`some of its patents since 2016. Denied as to the other allegations in this paragraph.
`PARTIES
`11.   Garmin admits that the Patents-in-Suit relate, in the most general sense,
`and partially divorced from the language of the claims, to GPS/audio athletic
`training, security mechanisms for transmission of personal data, connected
`wearable/online products, and [the] handling of interrupted connections. 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.   Garmin USA has not been served, is not subject to the jurisdiction of
`this Court, and is not responding herein. Garmin answers that, to its knowledge,
`Garmin USA has no place of business in this District.
`14.   Admit.
`15.   Garmin USA has not been served, is not subject to the jurisdiction of
`this Court, and is not responding herein. Garmin answers that, to its knowledge,
`Garmin USA has no place of business in this District.
`16.   Garmin Ltd. has not been served, is not subject to the jurisdiction of
`this Court, and is not responding herein. Garmin answers that, to its knowledge,
`admitted as to the place of business except that the address is “Mühlentalstrasse 2”.
`Denied as to “many leadership decisions”.
`17.   Admitted.
`18.   Garmin admits that it sells the Accused Products, and that some or all
`of those products are used by athletes, employ GPS, and security measures. As to
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 4 of 22 Page ID #:211
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`the remainder of the allegations in this paragraph, denied.
`JURISDICTION AND VENUE
`19.   Garmin admits that this is an action under the patent laws. Garmin
`admits that subject matter jurisdiction is proper in this District with the exception of
`the ’958 Patent. Philips appears to lack standing to assert the ’958 Patent and, as
`such, this Court does not have subject matter jurisdiction to adjudicate infringement
`of the ’958 Patent. Neither Garmin USA nor Garmin Ltd. has made an appearance
`in this matter and neither of them answers any allegations in Philips’ Complaint.
`20.   Garmin admits that personal jurisdiction as to it is proper in this
`District. Garmin denies that it has committed acts of infringement in this District.
`Neither Garmin USA nor Garmin Ltd. has made an appearance in this matter and
`neither of them answers any allegations in Philips’ Complaint. Garmin answers and
`makes clear that this Court does not have jurisdiction over Garmin Ltd. or Garmin
`USA.
`
`21.   Garmin denies that any software engineering in Goleta relates to any of
`the Accused Products.
`22.   Garmin USA has not been served, is not subject to the jurisdiction of
`this Court, and is not responding herein. Garmin answers that, to its knowledge,
`denied.
`23.   Garmin denies that any software engineering in Diamond Bar relates to
`any of the Accused Products.
`24.   Garmin USA has not been served, is not subject to the jurisdiction of
`this Court, and is not responding herein. Garmin answers that, to its knowledge,
`denied.
`25.   Garmin Ltd. has not been served, is not subject to the jurisdiction of
`this Court, and is not responding herein. Garmin answers that, to its knowledge,
`denied.
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 5 of 22 Page ID #:212
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`26.   Denied.
`27.  
`Jurisdiction over Garmin is proper in this District. Garmin Ltd. and
`Garmin USA have not been served, are not subject to the jurisdiction of this Court,
`and are not responding herein. Garmin answers that, to its knowledge, denied as to
`both entities.
`28.   Denied.
`29.   Admitted.
`30.   Admitted.
`31.   Garmin Ltd. has not been served, is not subject to the jurisdiction of
`this Court, and is not responding herein. Garmin answers that, to its knowledge,
`denied.
`32.   Garmin Ltd. has not been served, is not subject to the jurisdiction of
`this Court, and is not responding herein. Garmin answers that, to its knowledge,
`denied.
`33.   Admit that Garmin makes and sells the software in the Accused
`Products. Admit that Garmin owns some or all of the software once sold to the
`consumer; the consumer obtains and End User License Agreement. Garmin denies
`infringement.
`34.   Garmin Ltd. has not been served, is not subject to the jurisdiction of
`this Court, and is not responding herein. Garmin answers that, to its knowledge,
`some executives overlap, and some may have some level of awareness. Currently,
`Garmin lacks knowledge as to each executive’s “awareness” and therefore currently
`denies same.
`35.   Denied except as to Garmin International, Inc.
`36.   Garmin admits that venue is proper over it. Garmin Ltd. and Garmin
`USA have not been served, are not subject to the jurisdiction of this Court, and are
`not responding herein. Garmin answers that, to its knowledge, denied.
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`DEFENDANT’S ANSWER
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`5
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 6 of 22 Page ID #:213
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`37.   Admitted as to Garmin International, Inc.
`38.   Garmin Ltd. has not been served, is not subject to the jurisdiction of
`this Court, and is not responding herein. Garmin answers that, to its knowledge,
`denied as jurisdiction is not proper.
`39.   Admitted as to Garmin International, Inc.
`40.   Denied.
`
`FACTUAL BACKGROUND
`Philips Background and Innovation Leadership
`41.   Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`42.   Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`43.   Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`44.   Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`Garmin Background and Infringement
`45.   Admit except deny that all Accused Products measure blood oxygen
`content.
`46.   Admit.
`47.   Garmin admits that Philips contacted it in 2016 and admits that Garmin
`has refused to take a license to Philips’ patents. Garmin has a release to Philips’
`European counterpart to the ’007 Patent. Garmin denies infringement. As to other
`licensees, Garmin lacks knowledge of and therefore denies same.
`Accused Products
`48.   Garmin International, Inc admits that it sells fitness trackers in the
`United States. Garmin International, Inc denies that said products infringe the
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 7 of 22 Page ID #:214
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`Patents-in-Suit.
`49.   Garmin International, Inc. admits that it sells fitness trackers in the
`United States, including this District. Garmin International, Inc. denies that said
`products infringe the Patents-in-Suit.
`50.   Garmin International, Inc. admits that its ships products into this
`District.
`51.   Admit.
`
`Patents-in-Suit
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`52.   Denied.
`53.   Garmin denies that the Patents-in-Suit are derived from Philips’ efforts;
`each was acquired from a third party. Garmin denies that Philips’ claims can be
`read so broadly as stated in this paragraph.
`54.   Denied.
`
`U.S. Patent No. 6,013,007
`55.   Garmin denies that the ’007 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. 7,088,233
`57.   Garmin denies that the ’233 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.
`U.S. Patent No. 8,277,377
`59.   Garmin denies that the ’377 Patent was duly and legally issued. As to
`the remaining allegations, admitted.
`60.   Garmin lacks knowledge or information sufficient to form a belief
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 8 of 22 Page ID #:215
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`about the truth of the allegations in this paragraph and therefore denies same.
`U.S. Patent No. 6,976,958
`61.   Garmin denies that the ’958 Patent was duly and legally issued. As to
`the remaining allegations, admitted.
`62.   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
`63.   Garmin admits knowledge of the Patents-in-Suit. Garmin denies
`infringement and willful infringement.
`64.   Admit as to the ’007 and ’233; denied as to the ’377 and ’958. Garmin
`denies that Mr. Pemble is a founder of Garmin.
`COUNT 1
`INFRINGEMENT OF US PATENT NO. 6,013,007
`65.   Admit.
`66.   Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`67.   Denied.
`68.   Admit that Garmin customers can access any Garmin account and apps
`that are designed to work with their purchased product. Denied that the consumers
`actions are directed or controlled by Garmin. Admit that Garmin advertises some
`benefits for some products. As to remaining allegations, denied.
`69.   Denied.1
`70.   Denied.
`
`
`1 Again, and as greatly 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 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).
`
`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 9 of 22 Page ID #:216
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`71.   Denied.
`72.   Denied.
`73.   Denied.
`74.   Denied.
`75.   Denied.
`76.   Denied.
`77.   Denied.
`78.   Denied.
`79.   Denied.
`80.   Admit.
`81.   Denied.
`82.   Denied.
`
`COUNT II
`INFRINGEMENT OF PATENT NO. 7,088,233
`83.   Admit.
`84.   Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`85.   Denied.
`86.   Admit that Garmin customers can access any Garmin account and apps
`that are designed to work with their purchased product. Denied that the consumers
`actions are directed or controlled by Garmin. Admit that Garmin advertises some
`benefits for some products. As to remaining allegations, denied.
`87.   Denied.
`88.   Denied.
`89.   Denied.
`90.   Denied.
`91.   Denied.
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 10 of 22 Page ID #:217
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`92.   Denied.
`93.   Denied.
`94.   Denied.
`95.   Denied.
`96.   Denied.
`97.   Denied.
`98.   Admit.
`99.   Denied.
`100.   Denied.
`
`COUNT III
`INFRINGEMENT OF US PATENT NO. 8,277,377
`101.   Admit.
`102.   Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`103.   Denied.
`104.   Admit that Garmin customers can access any Garmin account and apps
`that are designed to work with their purchased product. Denied that the consumers
`actions are directed or controlled by Garmin. Admit that Garmin advertises some
`benefits for some products. As to remaining allegations, denied.
`105.   Denied.
`106.   Denied.
`107.   Denied.
`108.   Denied.
`109.   Denied.
`110.   Denied.
`111.   Denied.
`112.   Denied.
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 11 of 22 Page ID #:218
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`113.   Denied.
`114.   Denied.
`115.   Denied.
`116.   Denied.
`117.   Denied.
`118.   Denied.
`
`COUNT IV
`INFRINGEMENT OF US PATENT NO. 6,976,958
`119.   Admit.
`120.   Garmin lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`121.   Denied.
`122.   Denied.
`123.   Denied.
`124.   Denied.
`125.   Denied.
`126.   Denied.
`127.   Denied.
`128.   Denied.
`129.   Denied.
`130.   Denied.
`131.   Denied.
`132.   Denied.
`133.   Denied.
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`DAMAGES
`
`134.   Denied.
`135.   As to marking, Garmin lacks knowledge or information sufficient to
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 12 of 22 Page ID #:219
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`form a belief about the truth of the allegations in this paragraph and therefore denies
`same. Denied as to notice on 2/17/2016 as to each Patent-in-Suit.
`PRAYER FOR RELIEF
`Garmin denies that Philips is entitled to any relief so requested.
`
`
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`
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`1.  
`2.  
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`GARMIN’S AFFIRMATIVE DEFENSE
`AFFIRMATIVE DEFENSE 1: NON-INFRINGEMENT
`35 U.S. Code §  282(b)(1)
`Garmin does not infringe any of the Patents-in-Suit.
`By way of example, as to asserted Claim 23 of the ’007 Patent:
`a.  
`Claim 23 is a system claim.
`b.  
`An entity must make, use, or sell each limitation in a system
`claim to directly infringe.
`c.  
`Garmin does not put each element of the claim into service.
`d.  
`Garmin does not, for example, put into service modems.
`e.  
`Garmin does not, for example, put into service headsets.
`f.  
`Garmin cannot be an indirect infringer because Garmin does not
`control or benefit from each element of Claim 23.
`g.  
`Garmin does not, for example, demand that its customers use
`headsets.
`h.  
`Indeed, it is likely that few if any of Garmin’s customers use
`headsets.
`i.  
`Garmin does not, cannot, infringe asserted Claim 23
`3.  
`By way of a second example, the asserted claim of the ’958 Patent
`requires monitoring of a patient’s disease state or condition.
`4.  
`None of the Accused Devices are used to monitor patients.
`5.  
`Based on the strength of Garmin’s non-infringement positions, largely
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 13 of 22 Page ID #:220
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`communicated to Philips previously, Philips should be liable for Garmin’s costs and
`attorney’s fees under 35 U.S.C. § 285 and 28 U.S.C. § 1927.
`
`
`GARMIN’S COUNTERCLAIMS
`PARTIES, JURISDICTION, VENUE
`1.  
`Counterclaim Plaintiff Garmin International, Inc. (“Garmin”) is a
`Kansas corporation with two research and development facilities in this District.
`2.  
`Garmin is a recognized innovator in the fields of navigation and athletic
`performance monitoring devices (“APMDs”), among other products.
`3.  
`Garmin is among the top fitness tracker/APMD brands in the United
`States.
`4.  
`Counterclaim Defendant Philips North America, LLC is a Delaware
`limited liability company whose business is focused on healthcare and patient
`monitoring.
`5.  
`Philips does not have a leading APMD product; indeed, arguably does
`not sell an APMD.
`6.  
`Philips cited Actiwatch is not a fitness tracker or APMD but instead “is
`designed to help you better understand a subject’s daily activity and sleep/wake
`patterns in response to drug or behavioral therapies.”2
`7.  
`In fact, Philips’ 2018 two hundred and twenty (220) page Annual
`Report doesn’t even employ the word fitness qua fitness.3
`8.  
`The two companies simply operate in different fields and their
`technologies are employed in different markets.
`
`
`2 http://www.actigraphy.com/solutions/actiwatch/actiwatch2.html
`3 The word “fitness” is used twice, once for fitness memberships for Philips’
`employees and once for “professional fitness”.
`https://www.results.philips.com/publications/ar18#/downloads
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 14 of 22 Page ID #:221
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`9.  
`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.
`10.   Both parties have submitted to the personal jurisdiction of this Court for
`this matter.
`11.   Neither party challenges venue for this action.
`MATERIAL FACTS
`Garmin, Not Philips, Is The Actual Innovator
`12.   Philips alleges, “For more than 100 years, Philips has dedicated
`significant resources to research and development for the advancement of technology
`used around the world.” (Complaint, Dkt. No. 1, at ¶2.)
`13.   But, all of the Patents-in-Suit were acquired by Philips from third parties.
`14.   None of the Patents-in-Suit are a result of Philips’ research and
`development.
`15.   Philips alleges, “Connected health technologies developed by Philips are
`employed across the health continuum.” (Complaint, at ¶3.)
`16.   But, none of the alleged inventions in the Patents-in-Suit were developed
`by Philips.
`17.   Philips alleges, “Philips continues
`the development of
`lead
`to
`technologies that underpin connected health products including trackers.” (Id., at ¶5.)
`18.   But, Philips did not develop the technologies that lead to the alleged
`inventions in the Patents-in-Suit.
`19.   Philips acquired the ’958 Patent on July 18, 2019, three days before
`Philips filed suit against Garmin.
`20.   Philips acquired the ’377 Patent on July 18, 2019, three days before
`Philips filed suit against Garmin.
`21.   Philips acquired the ’007 Patent on July 18, 2019, three days before
`Philips filed suit against Garmin.
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 15 of 22 Page ID #:222
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`22.   Philips acquired the ’233 Patent on March 1, 2017 and recorded said
`assignment on July 18, 2019, three days before Philips filed suit against Garmin.
`23.   Garmin has been manufacturing and selling the Accused Products years
`before Philips acquired the Patents-in-Suit.
`24.   Philips’ statements in its Complaint—suggesting that Philips, and not
`Garmin, is the innovator in the area of connected sports devices—is intentionally
`misleading.
`Philips Misrepresents The Interactions Between The Parties and Omits Material
`Facts Relating to the Invalidity of the Patents-in-Suit
`25.   Philips alleges, “For years, Philips has repeatedly offered to license rights
`in the Patents-in-Suit to Garmin, but Garmin has repeatedly refused to accept Philips’
`offers to license.” (Complaint, ¶10.)
`26.   Philips’ Complaint alleges that it provided notice to Garmin of each of
`the Patents-in-Suit. That is not accurate.
`27.   Philips has never mentioned half of the Patents-in-Suit to Garmin (i.e.,
`never mentioned the asserted ’377 and ’958 Patents to Garmin).
`28.   Philips’ Complaint omits that Garmin and Garmin (Europe) Limited
`were engaged in litigation in Europe with KONINKLIJKE PHILIPS N.V., the parent
`of Philips, over European Patent No. 1,076,806B1.
`29.   EP1,076,806B1 is the PCT patent in the same family as the ’007,
`claiming priority to the ’007 Patent.
`30.   The claims of the EP1,076,806B1 are indistinguishable from those of the
`’007 Patent.
`31.   The text in this table represents Claims 1, 5, 26 and 27 of EP1,076,806B1
`and asserted claims 1, 21 and 23 of the ’007 Patent:
`
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 16 of 22 Page ID #:223
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`EP1,076,806B1
`1. A portable personal performance
`monitor for monitoring athletic
`performance when carried by an athlete,
`comprising
`
`a global positioning system GPS
`receiver (604) for acquiring time-stamped
`geographical position data of the athlete,
`
`Computing means (802) for conversion of
`said position data into athletic
`performance feedback data and
`
`
`Presentation means (202, 605, 606) for
`presenting said feedback data to said
`athlete.
`27. Use as recited in any of claims 24 to
`26, characterized in that said feedback
`system comprises an Internet website
`adapted to receive athletic performance
`feedback data from two or more athletes
`and display comparison data representing
`relative performance of said athletes.
`5. A portable personal performance
`monitor as recited in any of claims 1 to 4,
`
`6,013,007
`1. A portable feedback System
`providing regular updates on an
`athlete’s performance, comprising:
`
`
`a global positioning System GPS
`receiver that obtains a series of time-
`stamped waypoints;
`
`means for computing athletic
`performance feedback data from the
`series of time-stamped waypoints
`obtained by said GPS receiver; and
`
`means for presenting the athletic
`performance feedback data to an
`athlete.
`[21] a modem for transmitting the
`athletic performance feedback data to a
`remote computer for comparison with
`athletic performance data of other
`athletes.
`
`23. A system as recited in claim 21,
`further comprising a headset and an
`audio module for presenting the
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`DEFENDANT’S ANSWER
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`Case 2:19-cv-06301-AB-KS Document 23 Filed 08/07/19 Page 17 of 22 Page ID #:224
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`EP1,076,806B1
`characterized by further comprising an
`audio headset (202) connected to receive
`said feedback data as audio input from
`said presentation means (606).
`
`
`6,013,007
`athletic performance feedback data
`over said headset.
`
`32.   Philips’ Complaint omits that claims of the EP1,076,806B1 were
`invalidated in the European (“UK”) action. Attached as Exhibits A and B are true and
`correct copies of the UK Judgment and the European patent invalidated therein.
`33.   Philips’ Complaint omits that, in the UK action, KONINKLIJKE
`PHILIPS N.V admitted that the claims of EP1,076,806B1 were anticipated.
`34.   Philips’ Complaint omits that, in the UK action, KONINKLIJKE
`PHILIPS N.V accepted that claim 1 of the Patent was not only anticipated by, but also
`obvious, in the light of one of the prior art citations (Schutz Y and Chambaz A, “Could
`a satellite-based navigation system (GPS) be used to assess the physical activity of
`individuals on earth?”, European Journal of Clinical Medicine (1997) 61, 338-339)
`(“Schutz”).
`35.   Philips’ Complaint omits that the fitness trackers used in the 1997 Schutz
`study were Garmin trackers.
`36.   Philips’ Complaint omits the fact that Garmin GPS-based fitness trackers
`were widely used before the priority date of the earliest asserted patent (1998).
`37.   Philips’ Complaint omits that, in the UK action, KONINKLIJKE
`PHILIPS N.V’s expert, Mr. Farringdon, was cross-examined about the CycleOps
`eTrainer system and accepted that it provided customized individual training plans,
`was adapted to receive athletic performance data from two or more athletes, display
`comparison data relating to those athletes, and facilitated virtual competitions via the
`Internet.
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`DEFENDANT’S ANSWER
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`38.   Philips’ Complaint omits that, in the UK action Justice Henry Carr found:
`“I do not accept that considering such a known solution for outdoor activity, in the
`context of a GPS-based APMD would have required any invention. Nor would the
`provision of means for verifying actual exercise activity. On the contrary, as the
`skilled person would have appreciated, the nature and technical characteristics of GPS
`data made it obvious to use for virtual competitions and verification of actual exercise
`activity. This, in my view, is supported not only by the evidence of Mr[.] McKnight,
`but also by the evidence of Mr Farringdon at [333] – [334] of his first report.”
`39.   Philips’ Complaint omits that Justice Carr found that the very idea of
`asserted Claim 23 of the ’007 Patent (audio performance feedback) was obvious:
`“the applicability of audio feedback to runners using a GPS-based APMD was
`obvious.” (Exhibit A, at ¶253.)
`40.   And that said obvious determination was based on evidence from
`Garmin’s fitness trackers (Schutz).
`41.   Philips’ Complaint omits that Garmin has provided detailed non-
`infringement and invalidity arguments to Philips over the past three years.
`42.   All told, in the discussions between Garmin and Philips over the last three
`(3) years, Philips alleged that Garmin infringed seven (7) patents.
`43.   Garmin supplied non-infringement and invalidity arguments as to each
`patent.
`44.   Garmin invalidated the European counterpart of one of those patents
`(EP1,076,806B1) in January of this year.
`45.  
`In its Complaint, Philips asserts but two (2) of the seven (7) patents
`discussed with Garmin, implicitly acknowledging that the assertion of at least five (5)
`of the seven (7) patents would have been meritless.
`46.  
`In light of Justice Carr’s express findings in the UK action, Philips’
`allegations are surprising, at best. For example, the following allegations in the
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`Complaint are in direct contravention of Justice Carr’s findings:
`a.  
`“The claims of the ‘007 were not well known, routine, or
`conventional at the time of the invention, over twenty years ago, and
`represent specific improvements over the prior art and prior existing
`systems and methods.” (Complaint, ¶72.)
`b.  
`“At the time the inventions claimed in the ’007 patent were
`conceived, there were no devices for determining athletic performance
`and providing athletic performance feedback utilizing time-stamped
`waypoints, providing comparison at a remote computer with data from
`other athletes, or providing athletic performance feedback over a headset.
`For example, outdoor runners were generally limited to wristwatches
`with built-in stop watches, heart rate monitors, or pedometers.”
`(Complaint, ¶73.)
`c.  
`“As such, as of the priority date of the ’007 patent, there was no
`ready way for outdoor athletes to receive athletic performance feedback
`utilizing time-stamped waypoints, or to provide comparison at a remote
`computer with data of other athletes.” (Complaint, ¶74.)
`
`47.   Philips’ characterization, “For years, Philips has repeatedly offered to
`license rights in the Patents-in-Suit to Garmin, but Garmin has repeatedly refused to
`accept Philips’ offers to license,” is inconsistent with the facts and intentionally
`misleading.
`
`COUNTERCLAIM 1: INVALIDITY
`48.   Paragraphs 1-47 are incorporated by reference herein.
`49.   Each of the asserted claims are invalid pursuant to 35 U.S.C. §§ 101, 102,
`103, 112.
`50.  
`
`Justice Carr’s factual and legal findings, Exhibit A, are incorporated by
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`DEFENDANT’S ANSWER
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`reference herein.
`51.   As for the ’233 Patent, as explained to Philips previously, Garmin’s own
`products anticipate and/or render obvious the claims of the ’233 Patent.
`52.   Garmin explained to Philips on June 7, 2016: “Garmin’s Dynastream
`products described above had wireless transmitters and receivers that were paired to
`communi