`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 1 of 20 Page ID #:483
`
`
`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 Ltd.
`
`
`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
`
`
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`DEFENDANT GARMIN LTD.’S ANSWER, AFFIRMATIVE DEFENSE, AND
`COUNTERCLAIMS
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`
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`Pursuant to Federal Rule of Civil Procedure (“Rule”) 8(b), Defendant Garmin
`
`Ltd. answers Plaintiff’s (“Philips’”) Complaint, Dkt. No. 1.
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`Garmin Ltd. objects that the great bulk of Philips’ Complaint violates Rules
`8(a) and 10(b). Garmin Ltd. 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).
`///
`
`
`
`Garmin Ltd.’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 LTD.’S
`ANSWER, AFFIRMATIVE
`DEFENSE, AND
`COUNTERCLAIMS
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`Philips North America, LLC,
`
`
`Plaintiff,
`
`v.
`
`
`
`Garmin International, Inc., Garmin USA,
`and Garmin Ltd. LTD
`
`
`Defendants.
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 2 of 20 Page ID #:484
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`NATURE OF THE ACTION
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`1.  
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`Garmin Ltd. admits that Plaintiff Philips North America, LLC
`
`(“Philips”) brings this action. Garmin Ltd. denies infringement and that an
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`injunction is proper.
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`2.  
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`Garmin Ltd. admits that Philips is a subsidiary of Koninklijke Philips
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`N.V. Gamin Ltd. lacks knowledge or information sufficient to form a belief about
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`the truth of the remaining allegations in this paragraph and therefore denies same.
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`3.  
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`Garmin Ltd. 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 Ltd. 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 Ltd. 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 Ltd. 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 Ltd. 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.
`
`8.  
`Garmin Ltd. lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`9.  
`Garmin Ltd. admits that a predecessor Garmin entity was founded in
`1989 as ProNav, Inc. and that it offered devices for navigation, including GPS-based
`products. Denied as to the other allegations in this paragraph.
`
`Garmin Ltd.’s Answer
`
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`2
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 3 of 20 Page ID #:485
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`10.   Admit that Philips has tried to persuade Garmin Ltd. to take a license to
`some of its patents since 2016. Denied as to the other allegations in this paragraph.
`PARTIES
`11.   Garmin Ltd. admits that the Patents-in-Suit relate, in the most general
`sense, 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 Ltd. 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.   Admit that Garmin USA is organized under the laws of Kansas, denied
`as to the remaining allegations. (Defendant Garmin USA has been dismissed from
`this action).
`14.   Admitted.
`15.   Denied. (Defendant Garmin USA has been dismissed from this action.)
`16.   Admit that Garmin Ltd. is a Swiss company at the cited address. Deny
`that leadership decisions relevant to this matter are made by Garmin Ltd.
`17.   Admitted.
`18.   Denied.1
`
`JURISDICTION AND VENUE
`19.   Garmin Ltd. admits that this is an action under the patent laws. Garmin
`Ltd. admits that subject matter jurisdiction is proper in this District. Garmin Ltd.
`denies the remaining allegations in this paragraph.
`20.   Denied.
`
`
`1 Philips uses “Garmin” without identifying the specific Garmin entity referenced.
`Garmin Ltd. will respond as to itself only when the generic “Garmin” is employed
`by Philips.
`
`Garmin Ltd.’s Answer
`
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`3
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 4 of 20 Page ID #:486
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`21.   Admit that Garmin International maintains an engineering facility at
`said address. Remaining facts are denied.
`22.   Denied.
`23.   Admit that Garmin International maintains an engineering facility at
`said address. Remaining facts are denied.
`24.   Denied.
`25.   Denied.
`26.   Denied.
`27.   Denied.
`28.   Denied.
`29.   Denied.
`30.   Admitted.
`31.   Denied.
`32.   Denied.
`33.   Denied.
`34.   Admit.
`35.   Denied.
`36.   Admitted.
`37.   Denied.
`38.   Admitted.
`39.   Denied.
`40.   Denied.
`
`FACTUAL BACKGROUND
`Philips Background and Innovation Leadership
`41.   Garmin Ltd. lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`42.   Garmin Ltd. lacks knowledge or information sufficient to form a belief
`
`Garmin Ltd.’s Answer
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`4
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 5 of 20 Page ID #:487
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`about the truth of the allegations in this paragraph and therefore denies same.
`43.   Garmin Ltd. lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`44.   Garmin Ltd. lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`Garmin [Ltd.] Background and Infringement
`45.   Denied.2
`46.   Denied.
`47.   Admit that Garmin Ltd. has refused to take a license to the Patents-in-
`Suit. As to any remaining allegations, denied.
`Accused Products
`
`48.   Denied.
`49.   Denied.
`50.   Denied.
`51.   Denied.
`
`52.   Denied.
`53.   Denied.
`54.   Denied.
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`Patents-in-Suit
`
`U.S. Patent No. 6,013,007
`55.   Garmin Ltd. denies that the ’007 Patent was duly and legally issued.
`As to the remaining allegations, admitted.
`56.   Garmin Ltd. lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`
`
`2 Again, Philips is improperly using “Garmin” to refer to all three Garmin entities,
`but the entities are distinct. As to Philips’ use of “Garmin,” herein Garmin Ltd.
`assumes that term means Garmin Ltd., and answers for itself only.
`
`Garmin Ltd.’s Answer
`
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`5
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`

`

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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 6 of 20 Page ID #:488
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`U.S. Patent No. 7,088,233
`57.   Garmin Ltd. denies that the ’233 Patent was duly and legally issued.
`As to the remaining allegations, admitted.
`58.   Garmin Ltd. 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 Ltd. denies that the ’377 Patent was duly and legally issued.
`As to the remaining allegations, admitted.
`60.   Garmin Ltd. 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. 6,976,958
`61.   Garmin Ltd. denies that the ’958 Patent was duly and legally issued.
`As to the remaining allegations, admitted.
`62.   Garmin Ltd. lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`Garmin Ltd.’s Knowledge of Infringement
`63.   Denied.
`64.   Admit as to the ’007 and ’233; denied as to the ’377 and ’958. Garmin
`Ltd. denies that Mr. Pemble is a founder of Garmin Ltd.
`COUNT 1
`INFRINGEMENT OF US PATENT NO. 6,013,007
`65.   Admitted.
`66.   Denied.
`67.   Denied.
`68.   Denied.
`
`Garmin Ltd.’s Answer
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`6
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`

`

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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 7 of 20 Page ID #:489
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`69.   Denied.3
`70.   Denied.
`71.   Denied.
`72.   Denied.
`73.   Denied.
`74.   Denied.
`75.   Denied.
`76.   Denied.
`77.   Denied.
`78.   Denied.
`79.   Denied.
`80.   Admitted.
`81.   Denied.
`82.   Denied.
`
`COUNT II
`INFRINGEMENT OF PATENT NO. 7,088,233
`83.   Admitted.
`84.   Denied.
`85.   Denied.
`86.   Denied.
`87.   Denied.
`88.   Denied.
`89.   Denied.
`
`
`3 Again, and as greatly exemplified in these paragraphs, the great bulk of Philips’
`Complaint violates Rules 8(a) and 10(b). Garmin Ltd. 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).
`
`Garmin Ltd.’s Answer
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`7
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`

`

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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 8 of 20 Page ID #:490
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`90.   Denied.
`91.   Denied.
`92.   Denied.
`93.   Denied.
`94.   Denied.
`95.   Denied.
`96.   Denied.
`97.   Denied.
`98.   Admitted.
`99.   Denied.
`100.   Denied.
`
`COUNT III
`INFRINGEMENT OF US PATENT NO. 8,277,377
`101.   Admitted.
`102.   Denied.
`103.   Denied.
`104.   Denied.
`105.   Denied.
`106.   Denied.
`107.   Denied.
`108.   Denied.
`109.   Denied.
`110.   Denied.
`111.   Denied.
`112.   Denied.
`113.   Denied.
`114.   Denied.
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`Garmin Ltd.’s Answer
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`8
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 9 of 20 Page ID #:491
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`115.   Denied.
`116.   Denied.
`117.   Denied.
`118.   Denied.
`
`COUNT IV
`INFRINGEMENT OF US PATENT NO. 6,976,958
`119.   Admitted.
`120.   Denied.
`121.   Denied.
`122.   Denied.
`123.   Denied.
`124.   Denied.
`125.   Admit that the ’377 and ’958 are related. As to remaining allegations,
`denied.
`126.   Denied.
`127.   Denied.
`128.   Denied.
`129.   Denied.
`130.   Denied.
`131.   Denied.
`132.   Denied.
`133.   Denied.
`
`DAMAGES
`
`134.   Denied.
`135.   As to marking, Garmin Ltd. lacks knowledge or information sufficient
`to 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.
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`Garmin Ltd.’s Answer
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`9
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 10 of 20 Page ID #:492
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`PRAYER FOR RELIEF
`Garmin Ltd. denies that Philips is entitled to any relief so requested.
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`1.  
`2.  
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`GARMIN LTD.’S AFFIRMATIVE DEFENSE
`AFFIRMATIVE DEFENSE 1: NON-INFRINGEMENT
`35 U.S. Code §  282(b)(1)
`Garmin Ltd. 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 Ltd. does not put each element of the claim into service.
`d.  
`Garmin Ltd. does not, for example, put into service modems.
`e.  
`Garmin Ltd. does not, for example, put into service headsets.
`f.  
`Garmin Ltd. cannot be an indirect infringer because Garmin Ltd.
`does not control or benefit from each element of Claim 23.
`g.  
`Garmin Ltd. does not, for example, demand that its customers
`use headsets.
`h.  
`Indeed, it is likely that few if any of Garmin International’s
`customers use headsets.
`i.  
`Garmin Ltd. 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 Ltd.’s non-infringement positions,
`largely communicated to Philips previously, Philips should be liable for Garmin
`Ltd.’s costs and attorney’s fees under 35 U.S.C. § 285 and 28 U.S.C. § 1927.
`
`Garmin Ltd.’s Answer
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`10
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`

`

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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 11 of 20 Page ID #:493
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`GARMIN LTD.’S COUNTERCLAIMS
`PARTIES, JURISDICTION, VENUE
`1.  
`Counterclaim Plaintiff Garmin Ltd. is a Swiss corporation with no
`presence in this District.
`2.  
`Counterclaim Defendant Philips North America, LLC is a Delaware
`limited liability company whose business is focused on healthcare and patient
`monitoring.
`3.  
`Philips does not have a leading APMD product; indeed, arguably does
`not sell an APMD.
`4.  
`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.”4
`5.  
`In fact, Philips’ 2018 two hundred and twenty (220) page Annual
`Report doesn’t even employ the word fitness qua fitness.5
`6.  
`The two companies simply operate in different fields and their
`technologies are employed in different markets.
`7.  
`This Court has subject matter jurisdiction over Garmin Ltd.’s
`counterclaims pursuant to 35 U.S.C. § 271 et seq., and 28 U.S.C. §§ 1331, 1338, and
`2201-02.
`8.  
`
`Neither party challenges venue for this action.
`MATERIAL FACTS
`Garmin International, Not Philips, Is The Actual Innovator
`Philips alleges, “For more than 100 years, Philips has dedicated
`
`9.  
`
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`4 http://www.actigraphy.com/solutions/actiwatch/actiwatch2.html
`5 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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`Garmin Ltd.’s Answer
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`11
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 12 of 20 Page ID #:494
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`significant resources to research and development for the advancement of technology
`used around the world.” (Complaint, Dkt. No. 1, at ¶2.)
`10.   But, all of the Patents-in-Suit were acquired by Philips from third parties.
`11.   None of the Patents-in-Suit are a result of Philips’ research and
`development.
`12.   Philips alleges, “Connected health technologies developed by Philips are
`employed across the health continuum.” (Complaint, at ¶3.)
`13.   But, none of the alleged inventions in the Patents-in-Suit were developed
`by Philips.
`14.   Philips alleges, “Philips continues
`the development of
`lead
`to
`technologies that underpin connected health products including trackers.” (Id., at ¶5.)
`15.   But, Philips did not develop the technologies that lead to the alleged
`inventions in the Patents-in-Suit.
`16.   Philips acquired the ’958 Patent on July 18, 2019, three days before
`Philips filed suit against Garmin Ltd.
`17.   Philips acquired the ’377 Patent on July 18, 2019, three days before
`Philips filed suit against Garmin Ltd.
`18.   Philips acquired the ’007 Patent on July 18, 2019, three days before
`Philips filed suit against Garmin Ltd.
`19.   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 Ltd.
`20.   Garmin International has been manufacturing and selling the Accused
`Products for years before Philips acquired the Patents-in-Suit.
`21.   Philips’ statements in its Complaint—suggesting that Philips, and not
`Garmin International, is the innovator in the area of connected sports devices—is
`misleading.
`Philips Misrepresents The Interactions Between The Parties and Omits Material
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`Garmin Ltd.’s Answer
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`12
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`

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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 13 of 20 Page ID #:495
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`Facts Relating to the Invalidity of the Patents-in-Suit
`22.   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.)
`23.   Philips’ Complaint alleges that it provided notice to Garmin of each of
`the Patents-in-Suit.
`24.   But, Philips has never mentioned half of the Patents-in-Suit to Garmin
`(i.e., never mentioned the asserted ’377 and ’958 Patents to Garmin).
`25.   Philips never provided copies of the ’377 and ’958 Patents to Garmin
`prior to filing the instant Complaint.
`26.   Philips’ Complaint omits that 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.
`27.   EP1,076,806B1 is the PCT patent in the same family as the ’007,
`claiming priority to the ’007 Patent.
`28.   The claims of the EP1,076,806B1 are indistinguishable from those of the
`’007 Patent.
`29.   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:
`
`
`EP1,076,806B1
`1. A portable personal performance
`monitor for monitoring athletic
`performance when carried by an athlete,
`comprising
`
`
`6,013,007
`1. A portable feedback System
`providing regular updates on an
`athlete’s performance, comprising:
`
`
`Garmin Ltd.’s Answer
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`13
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 14 of 20 Page ID #:496
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`EP1,076,806B1
`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
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`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,
`characterized by further comprising an
`audio headset (202) connected to receive
`said feedback data as audio input from
`said presentation means (606).
`
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`6,013,007
`a global positioning System GPS
`receiver that obtains a series of time-
`stamped waypoints;
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`means for computing athletic
`performance feedback data from the
`series of time-stamped waypoints
`obtained by said GPS receiver; and
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`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
`athletic performance feedback data
`over said headset.
`
`30.   Claims of the EP1,076,806B1 were invalidated in the European (“UK”)
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`Garmin Ltd.’s Answer
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`14
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 15 of 20 Page ID #:497
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`action.
`31.  
`In the UK action, KONINKLIJKE PHILIPS N.V admitted that the claims
`of EP1,076,806B1 were anticipated.
`32.  
`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”).
`33.   The fitness trackers used in the 1997 Schutz study were Garmin trackers.
`34.   Garmin International’s GPS-based fitness trackers were widely used
`before the priority date of the earliest asserted patent (1998).
`35.  
`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.
`36.   Garmin Ltd. has provided detailed non-infringement and invalidity
`arguments to Philips over the past three years.
`37.   All told, in the discussions between Philips and at least one Garmin entity
`over the last three (3) years, Philips alleged that Garmin infringed seven (7) patents.
`38.   Garmin Ltd. supplied non-infringement and invalidity arguments as to
`each patent.
`39.   Garmin Ltd. invalidated the European counterpart of one of those patents
`(EP1,076,806B1) in January of this year.
`40.  
`In its Complaint, Philips asserts but two (2) of the seven (7) patents
`discussed with Garmin Ltd., implicitly acknowledging that the assertion of at least
`five (5) of the seven (7) patents would have been meritless.
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`Garmin Ltd.’s Answer
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`15
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 16 of 20 Page ID #:498
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`41.   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.
`COUNTERCLAIM 1: INVALIDITY
`(Invalidity of the claims of each of the Patents-in-Suit pursuant to §102, 1036)
`42.   Paragraphs 1-41 are incorporated by reference herein.
`43.   The claims of each of the Patents-in-Suit are invalid pursuant to 35
`U.S.C. §§ 102 and 103, alone or in combination.
`44.   Specifically, examples of prior art for the ’007 patent is detailed in
`paragraphs 26-34, supra.
`45.   Further, 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.
`46.  
`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.
`47.   The claims of EP1,076,806B1 and the asserted ’007 patent are
`indistinguishable.
`48.   Thus, GPS II+, Hingham, and Schultz are each invalidating prior art for
`the ’007.
`49.   Philips was aware of GPS II+, Hingham, and Schultz prior to filings its
`Complaint in this matter.
`a.  
`
`Shultz is described in Exhibit A, Dkt. No. 23-1, ¶¶190-198,
`
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`6 Garmin Ltd. lists only sections 102 and 103 herein, even though the convention is
`to list 101, 102, 103, and 112, given Philips’ outstanding motion to dismiss, Dkt No.
`29. However, both Garmin entities believe Garmin International’s invalidity
`counterclaim was properly plead. (See Dkt. No. 23.) There is no basis to mandate
`that a defendant plead facts under each and every invalidity statute for a single
`invalidity counterclaim.
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`Garmin Ltd.’s Answer
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`16
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 17 of 20 Page ID #:499
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`c.  
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`b.  
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`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.
`50.   Garmin 45 anticipates and/or renders obvious the claims of the ’007
`patent.
`51.   Philips was aware of the Garmin 45 prior to filing its Complaint in this
`matter.
`52.   As for the ’233 Patent, Garmin International’s own products anticipates
`and/or render obvious the claims of the ’233 Patent.
`53.   For example, Garmin International’s Dynastream products anticipate
`and/or renders obvious the claims of the ’233 patent.
`54.   Philips was aware of the Dynastream products before it filed its
`Complaint in this matter.
`55.   A May 1998 paper from Ericsson that details the original Bluetooth
`pairing process anticipates and/or renders obvious the claims of the ’233 patent.
`56.   The Ericsson paper was provided to Philips by Garmin Ltd. prior to
`Philips’ filing its Complaint in this matter.
`57.   As for the asserted Quy patents, Philips knows the claims of those patents
`are invalid.
`58.   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
`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 International’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 Ltd.
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`Garmin Ltd.’s Answer
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 18 of 20 Page ID #:500
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`examples.”
`59.   Each of the four patents in paragraph 58 alone or in combination
`anticipate and/or render obvious the claims of the two asserted Quy patents.
`60.   EP 1 247 229 B1 is the European patent arising from the US provisional
`to which the asserted Quy patents claim priority.
`61.   Philips had in its possession Quy (US App No. 13/632,771) prior to filing
`the Complaint at-bar.
`62.   Philips had in its possession Fry, 1996 prior to filing the Complaint at-
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`bar.
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`bar.
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`63.   Philips had in its possession Fyfe, 1996 prior to filing the Complaint at-
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`64.   Philips had in its possession Mault prior to filing the Complaint at-bar.
`65.   Philips had in its possession Lindberg (US Patent No. 7,069,552) prior
`to filing the Complaint at-bar.
`66.   Philips had in its possession Dean (WO 99/41682) prior to filing the
`Complaint at-bar.
`67.   Alone or in combination, the prior art cited in paragraphs 58-65 render
`the asserted Quy claims anticipated and/or obvious.
`68.   Philips should pay Garmin Ltd.’s costs and attorney’s fees for asserting
`the Quy ’377 and ’958 Patent claims.
`COUNTERCLAIM 2: INVALIDITY
`(Section 101, Patent Nos. ’077, ’2337)
`69.   Paragraphs 1-68 are incorporated by reference herein.
`70.   The claims of the ’007 patent are invalid as drawn toward unpatentable
`subject matter.
`
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`7 Garmin Ltd. reserves the right to allege Section 101 invalidity over the ’958 and
`’377 patents in its invalidity contentions.
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`Garmin Ltd.’s Answer
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 19 of 20 Page ID #:501
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`71.   Claim 1 is representative.
`72.   Claim 1 is drawn toward abstract subject matter and fails to contain an
`inventive step.
`73.   For example, all of the modules in Claim 1 are generic and the claim
`triggers preemption concerns (GPS, means for computing, means for displaying).
`74.   The claims of the ’233 patent are invalid as drawn toward unpatentable
`subject matter.
`75.   Claim 1 is representative.
`76.   As with the ’007, all of the modules of the claim are generic and trigger
`preemption concerns.
`77.   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.
`JURY DEMAND
`Garmin Ltd. requests a jury trial for all issues so triable.
`
`
`
`
`PRAYER FOR RELIEF
`Garmin Ltd. 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 all asserted claims of the Patents-in-Suit are invalid;
`•   An award of attorney’s fees and costs pursuant to 35 US.C. § 285 and 28
`US.C. § 1927.
`
`
`
`///
`///
`///
`///
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`Garmin Ltd.’s Answer
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`Case 2:19-cv-06301-AB-KS Document 41 Filed 11/15/19 Page 20 of 20 Page ID #:502
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`November 15, 2019
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`Respectfully submitted
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`_________________________
`Rachael D. Lamkin
`Attorney for Defendant
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`CERTIFICATE OF SERVICE
`
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`On this date, November 15, 2019, Defendant Garmin Ltd.’s Answer,
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`Affirmative Defense, and Counterclaims, and exhibits thereto, was served upon
`Plaintiff using the Court’s ECF system.
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`___________________
`Rachael D. Lamkin
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`Garmin Ltd.’s Answer
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