`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 1 of 24 Page ID #:789
`
`
`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
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`
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`DEFENDANT GARMIN LTD.’S CORRECTED ANSWER TO PHILIPS’
`FIRST AMENDED COMPLAINT, AFFIRMATIVE DEFENSE, AND
`COUNTERCLAIMS
`
`
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`Pursuant to Federal Rule of Civil Procedure (“Rule”) 8(b), Defendant Garmin
`
`Ltd. answers Plaintiff’s (“Philips’”) First Amended Complaint (“FAC”), Dkt. No. 45.
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`Garmin Ltd. objects that the great bulk of Philips’ FAC violates Rules 8(a) and
`10(b). Garmin Ltd. has made a good faith attempt to answer the factual allegations
`in Philips’ FAC but herein objects that a great number of paragraphs are not “limited
`as far as practicable to a single set of circumstances”. Fed.R.Civ.P 10(b).
`
`
`Garmin Ltd.’s Corrected Answer to FAC
`
`
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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
`CORRECTED ANSWER TO
`PHILIPS’ FAC, AFFIRMATIVE
`DEFENSE, AND
`COUNTERCLAIMS
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`Philips North America, LLC,
`
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`Plaintiff,
`
`v.
`
`
`
`Garmin International, Inc. and Garmin
`Ltd.
`
`
`Defendants.
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 2 of 24 Page ID #:790
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`NATURE OF THE ACTION
`
`1.  
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`Garmin Ltd. admits that Plaintiff Philips North America, LLC
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`(“Philips”) brings this action. Garmin Ltd. denies the remainder of the allegations in
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`this paragraph.
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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. Garmin Ltd denies the remaining allegations in this paragraph.
`
`Garmin Ltd.’s Corrected Answer to FAC
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`2
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 3 of 24 Page ID #:791
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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 remaining 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, and that Philips is a Delaware LLC. Garmin Ltd. denies that the
`Patents-in-Suit contain “innovations”. 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.   Admitted.
`14.   Admitted except as to “infringements,” which is denied.
`15.   Admitted.
`16.   Denied as to Garmin Ltd except that Garmin Ltd. admits that it has not
`taken a license to the Patents-in-Suit.
`JURISDICTION AND VENUE
`17.   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.
`18.   Denied.1
`19.   Admit that Garmin International maintains an engineering facility at
`said address. Remaining facts are denied.
`20.   Admit that Garmin International maintains an engineering facility at
`
`
`1 Philips uses “Garmin” without designating the entity addressed. Throughout, Garmin Ltd. will
`answer only as to itself, and as if “Garmin” means Garmin Ltd.
`
`Garmin Ltd.’s Corrected Answer to FAC
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`3
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 4 of 24 Page ID #:792
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`said address. Remaining facts are denied.
`21.   Denied.
`22.   Denied.
`23.   Denied.
`24.   Denied.
`25.   Denied.
`26.   Admitted.
`27.   Denied.
`28.   Denied.
`29.   Denied.
`30.   Admitted.
`31.   Denied.
`32.   Denied.
`33.   Denied.
`34.   Admitted.
`35.   Denied.
`36.   Denied.
`
`FACTUAL BACKGROUND
`Philips Background and Innovation Leadership
`37.   Garmin Ltd. lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`38.   Garmin Ltd. lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`39.   Garmin Ltd. lacks knowledge or information sufficient to form a belief
`about the truth of the allegations in this paragraph and therefore denies same.
`40.   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 Corrected Answer to FAC
`
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`4
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 5 of 24 Page ID #:793
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`Garmin [Ltd.] Background and Infringement
`41.   Denied.
`42.   Denied.
`43.   Admit that Garmin Ltd. has refused to take a license to the Patents-in-
`Suit. As to any remaining allegations, denied.
`Accused Products
`
`44.   Denied.
`45.   Denied.
`46.   Denied.
`47.   Denied.
`
`48.   Denied.
`49.   Denied.
`50.   Denied.
`
`Patents-in-Suit
`
`U.S. Patent No. 6,013,007
`51.   Garmin Ltd. denies that the ’007 Patent was duly and legally issued.
`As to the remaining allegations, admitted.
`52.   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. 7,088,233
`53.   Garmin Ltd. denies that the ’233 Patent was duly and legally issued.
`As to the remaining allegations, admitted.
`54.   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
`55.   Garmin Ltd. denies that the ’377 Patent was duly and legally issued.
`As to the remaining allegations, admitted.
`
`Garmin Ltd.’s Corrected Answer to FAC
`
`
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`5
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`

`

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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 6 of 24 Page ID #:794
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`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.
`U.S. Patent No. 6,976,958
`57.   Garmin Ltd. denies that the ’958 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. 9,314,192
`59.   Garmin Ltd. denies that the ’192 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. 9,801,542
`61.   Garmin Ltd. denies that the ’542 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 Corrected Answer to FAC
`
`
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`6
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`

`

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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 7 of 24 Page ID #:795
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`69.   Denied.2
`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.
`
`
`2 Again, as 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 Corrected Answer to FAC
`
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`7
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`

`

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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 8 of 24 Page ID #:796
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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.
`
`Garmin Ltd.’s Corrected Answer to FAC
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`8
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`

`

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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 9 of 24 Page ID #:797
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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.
`
`COUNT V
`INFRINGEMENT OF US PATENT NO. 9,314,192
`134.   Admitted.
`135.   Denied.
`136.   Denied.
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`Garmin Ltd.’s Corrected Answer to FAC
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`9
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 10 of 24 Page ID #:798
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`137.   Denied.
`138.   Admit that the Vivoki can be worn anywhere, including the four
`locations shown. However, the Vivoki does not detect or determine where it is
`located on the user’s body. As to remaining allegations, they do not apply to the
`Vivoki and are thus denied.
`139.   Denied.
`140.   Denied.
`141.   Denied.
`142.   Denied.
`143.   Denied.
`144.   Denied.
`145.   Admitted.
`146.   Denied.
`147.   Denied.
`
`COUNT VI
`INFRINGEMENT OF US PATENT NO. 9,801,542
`148.   Admitted.
`149.   Denied.
`150.   Denied.
`151.   Denied.
`152.   Admit that the Forerunner 645 has Bluetooth and wifi capabilities, and
`that it is able to monitor heartrate and employs accelerometers. As to the remainder
`of the allegations, the link provided in Philips’ complaint results in a 404 error
`message, see below. As such, Garmin Ltd. has insufficient information to affirm or
`deny the information in said link, and therefore denies same.
`
`Garmin Ltd.’s Corrected Answer to FAC
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`10
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`

`

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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 11 of 24 Page ID #:799
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`153.   The links cited by Philips do not identify specific devices. That said,
`admit that some Garmin devices monitor training status and employ EPOC, VO2
`Max, and training load. However, the Accused Products do not employ sensors or
`warnings, or analyze vital parameters as those terms are employed in the ’542
`Patent, to name just a few of the distinctions between the Asserted Claim and the
`Accused Products. As to the remainder of the allegations, denied.
`154.   Denied.
`155.   Denied.
`156.   Denied.
`157.   Denied.
`158.   Denied.
`159.   Denied.
`160.   Admitted.
`161.   Denied.
`162.   Denied.
`
`DAMAGES
`163.   Admit that Garmin Ltd. has refused to license the Patents-in-Suit.
`Denied as to remaining allegations.
`164.   Denied.
`
`PRAYER FOR RELIEF
`Garmin Ltd. denies that Philips is entitled to any relief so requested.
`
`
`
`
`GARMIN LTD.’S AFFIRMATIVE DEFENSE
`
`Garmin Ltd.’s Corrected Answer to FAC
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`11
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 12 of 24 Page ID #:800
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`1.  
`2.  
`
`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.  
`By way of third example, asserted Claim 9 of the ’233 requires the
`ability to select from an electroencephalogram.
`6.  
`Garmin sells no products with the ability to select from an
`electroencephalogram.
`7.  
`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 Corrected Answer to FAC
`
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`12
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`

`

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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 13 of 24 Page ID #:801
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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.
`3.  
`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.
`4.  
`
`Neither party challenges venue for this action alone.
`MATERIAL FACTS
`Philips Misrepresents The Interactions Between The Parties and Omits Material
`Facts Relating to the Invalidity of the Patents-in-Suit
`5.  
`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.” (FAC, ¶10.)
`6.  
`Philips’ Complaint alleges that it provided notice to Garmin of each of
`the Patents-in-Suit.
`7.  
`But, prior to suit, Philips never mentioned four of the six Patents-in-Suit
`to Garmin.
`8.  
`Philips never mentioned the ’377 or ’958 Patents to Garmin prior to filing
`the instant Complaint.
`9.  
`Philips never provided copies of the ’377 or ’958 Patents to Garmin prior
`to filing the instant Complaint.
`10.   Philips never mentioned the ’192 or ’542 Patents to Garmin prior to filing
`the instant Complaint.
`11.   Philips never provided copies of the ’192 or ’542 Patents to Garmin prior
`
`Garmin Ltd.’s Corrected Answer to FAC
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`13
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 14 of 24 Page ID #:802
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`to filing the instant Complaint.
`12.   Garmin (Europe) Limited was engaged in litigation in Europe with
`KONINKLIJKE PHILIPS N.V., the parent of Philips, over European Patent No.
`1,076,806B1 (the “UK Litigation”).
`13.   Philips’ Complaint fails to mention the UK Litigation.
`14.   EP1,076,806B1 is the PCT patent in the same family as the ’007,
`claiming priority to the ’007 Patent.
`15.   The claims of the EP1,076,806B1 are indistinguishable from those of the
`’007 Patent.
`16.   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
`
`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
`
`
`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
`
`
`Garmin Ltd.’s Corrected Answer to FAC
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 15 of 24 Page ID #:803
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`EP1,076,806B1
`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).
`
`
`6,013,007
`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.
`
`17.   Claims of the EP1,076,806B1 were invalidated in the UK Litigation.
`18.  
`In the UK Litigation, KONINKLIJKE PHILIPS N.V admitted that some
`of the claims of EP1,076,806B1 were anticipated.
`19.  
`In the UK Litigation, KONINKLIJKE PHILIPS N.V accepted that Claim
`1 of the EP1,076,806B1 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”).
`20.   The fitness trackers used in the 1997 Schutz study were Garmin trackers.
`21.   Garmin International’s GPS-based fitness trackers were widely used
`
`Garmin Ltd.’s Corrected Answer to FAC
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 16 of 24 Page ID #:804
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`before the priority date of the earliest asserted patent (1998).
`22.  
`In the UK Litigation, KONINKLIJKE PHILIPS N.V’s expert, Mr.
`Farringdon, was cross-examined about the CycleOps eTrainer system.
`23.  
`In the UK Litigation, Mr. Farrington accepted that the Cyclops eTrainer
`system 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.
`24.   Garmin Ltd. has provided detailed non-infringement and invalidity
`arguments to Philips over the past three years.
`25.   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.
`26.   Garmin Ltd. supplied non-infringement and invalidity arguments as to
`each patent.
`27.   Garmin Ltd. invalidated the European counterpart of one of those patents
`(EP1,076,806B1) in January of this year.
`28.  
`In its original Complaint, Dkt. No. 1 (“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.
`29.   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, 103)
`30.   Paragraphs 1-29 are incorporated by reference herein.
`The ’007 Patent
`31.   The claims of each of the Patents-in-Suit are invalid pursuant to 35
`U.S.C. §§ 102 and 103, alone or in combination.
`
`Garmin Ltd.’s Corrected Answer to FAC
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 17 of 24 Page ID #:805
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`32.   Specifically, examples of prior art for the ’007 patent is detailed in
`paragraphs 14-23, supra.
`33.   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.
`34.  
`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.
`35.   The claims of EP1,076,806B1 and the asserted ’007 patent are
`indistinguishable.
`36.   GPS II+, Hingham, and Schultz are each invalidating prior art for the
`
`’007.
`
`37.   Philips was aware of GPS II+, Hingham, and Schultz prior to filings its
`Complaint in this matter.
`a.  
`
`b.  
`
`c.  
`
`Shultz is described in Exhibit A, Dkt. No. 23-1, ¶¶190-198,
`which is incorporated by reference herein.
`Hingham is described in Exhibit A, Dkt. No. 23-1, ¶¶199-
`204, which is incorporated by reference herein.
`GPS II+ is described in Exhibit A, Dkt. No. 23-1, ¶¶205-
`207, which is incorporated by reference herein.
`38.   Garmin 45 anticipates and/or renders obvious the claims of the ’007
`patent.
`39.   Philips was aware of the Garmin 45 prior to filing its Complaint in this
`matter.
`
`The ’233 Patent
`40.   Garmin International’s own products anticipates and/or render obvious
`the claims of the ’233 Patent.
`41.   For example, Garmin International’s Dynastream products anticipate
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`Garmin Ltd.’s Corrected Answer to FAC
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 18 of 24 Page ID #:806
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`and/or renders obvious the claims of the ’233 patent.
`42.   Philips was aware of one or more of the Dynastream products before it
`filed its Complaint in this matter.
`43.   A May 1998 paper from Ericsson that details the original Bluetooth
`pairing process anticipates and/or renders obvious the claims of the ’233 patent.
`44.   The Ericsson paper was provided to Philips by Garmin Ltd. prior to
`Philips’ filing its Complaint in this matter.
`The Quy Patents
`45.   As for the asserted Quy patents, Philips knows the claims of those patents
`are invalid.
`46.   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.
`examples.”
`47.   Each of the four patents in paragraph 46 alone or in combination
`anticipate and/or render obvious the claims of the two asserted Quy patents.
`48.   EP 1 247 229 B1 is the European patent arising from the US provisional
`to which the asserted Quy patents claim priority.
`49.   Philips had in its possession Quy (US App No. 13/632,771) prior to filing
`its Complaint.
`50.   Philips had in its possession US Patent No. 5,955,667 prior to filing its
`Complaint.
`51.   Philips had in its possession U.S. Patent Nos. 6,002,982 prior to filing its
`Complaint.
`
`Garmin Ltd.’s Corrected Answer to FAC
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 19 of 24 Page ID #:807
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`52.   Philips had in its possession Mault (WO2001039089) prior to filing its
`Complaint.
`53.   Philips had in its possession Lindberg (US Patent No. 7,069,552) prior
`to filing its Complaint.
`54.   Philips had in its possession Dean (WO 99/41682) prior to filing its
`Complaint.
`55.   Alone or in combination, the prior art cited in paragraphs 46-54 render
`the asserted Quy claims anticipated and/or obvious.
`56.   Philips should pay Garmin Ltd.’s costs and attorney’s fees for asserting
`the Quy ’377 and ’958 Patent claims.
`The ’192 Patent
`57.   The ideas in Asserted Claim 20 were well known long before the priority
`date of the ’192 Patent.
`58.   For example, the Dynastream products from the UK Litigation predate
`the ’192 Patent.
`59.   Philips knew of the Dynastream products before asserting the ’192 in this
`litigation.
`60.   By way of second example, Montoye HJ, Washburn R, Servais S, Ertl A,
`Webster JG, and Nagle FJ published “estimation of energy expenditure by a portable
`accelerometer” in 1983 (Med Sci Sports Exerc. 1983;15(5):403-7) anticipates and/or
`renders obvious the claims of the ’192 Patent.
`61.   That published study taught, inter alia:
`a.  
`A small portable accelerometer was developed to estimate the
`energy expenditure of daily activities.
`The accelerometer is reported to be an improvement over
`movement counters currently on the market.
`The oxygen requirement of 14 different activities was measured in
`
`b.  
`
`c.  
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`Garmin Ltd.’s Corrected Answer to FAC
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 20 of 24 Page ID #:808
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`d.  
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`e.  
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`f.  
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`21 subjects while each wore the accelerometer on the waist. A
`movement counter
`(mercury switch), which
`is available
`commercially, was also worn on the waist and another was worn
`on the left wrist.
`The reproducibility of the accelerometer readings was high (4
`subjects, 14 activities; r = 0.94) and was superior to either the waist
`movement counter (r = 0.63) or the wrist movement counter (r =
`0.74).
`In estimating oxygen requirement (VO2) the standard error of
`estimate, based on 21 subjects and 14 activities, was 6.6 ml X min-
`1 X kg-1 for the accelerometer.
`This was also better (smaller) than for the waist movement counter
`(9.2 ml X min-1 X kg-1) or for the wrist movement counter (7.9
`ml X min-1 X kg-1).
`62.   Claim 20 is also anticipated by “The Technology of Accelerometry-
`Based Activity Monitors: Current and Future” published in Med. Sci. Sports Exerc.,
`Vol. 37, No. 11(Suppl), pp. S490-S500, 2005.
`The ’542 Patent
`63.   Asserted Claim 13 covers:
`a.  
`A method for maintaining wellness in a user comprising the
`following steps:
`using one or more sensors physically coupled to the user and
`connected to a network, to monitor one or more vital parameters,
`providing data representative of the user's physical condition;
`analyzing the one or more vital parameters using a statistical
`analyzer, trained with training data representing physiological
`conditions determined to be undesirable for the user to analyze the
`
`b.  
`
`c.  
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`Garmin Ltd.’s Corrected Answer to FAC
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`Case 2:19-cv-06301-AB-KS Document 48 Filed 12/30/19 Page 21 of 24 Page ID #:809
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`d.  
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`b.  
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`in
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`the
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`vital parameters to determine if the physiological conditions are
`undesirable; and
`generating a warning indication when the user's physical condition
`is undesirable.
`64.   Setting aside the indefinite term (“undesirable”), Claim 13 is anticipated
`and/or rendered obvious by the Holter ECG, first commercially available in 1962.
`65.  
`In addition to the above references, Claim 13 is anticipated and/or
`rendered obvious by each of the following publications:
`a.  
`Sheppard L. C., Kouchoukos N. T., Kurtts M. A., Kirklin J. W.
`Automated
`treatment of critically
`ill patients
`following
`operation. Annals of Surgery. 1968;168(4):596–604.
`Siegel J. H., Fichthorn J., Monteferrante J., et al. Computer based
`consultation
`in
`‘care’
`of
`the
`critically
`ill
`patient. Surgery. 1976;80(3):350–364.
`Seiver A. Critical care computing: past, present, and
`future. Critical Care Clinics. 2000;16(4):601–621.
`Booth F. Patient monitoring and data processing
`ICU. Critical Care Medicine. 1983;11(1):57–58.
`“Information Technology in Critical Care: Review of Monitoring
`and Data Acquisition Systems for Patient Care and Research.”
`Information Technology in Critical Care: Review of Monitoring
`and Data Acquisition Systems for Patient Care and Research
`COUNTERCLAIM 2: INVALIDITY
`(Section 101, Patent Nos. ’077, ’2333)
`
`c.  
`
`d.  
`
`e.  
`
`
`3 These are but examples. Garmin Ltd. will disclose all patent claims subject to
`Section 101 challenges as part of its invalidity contentions disclosure (if not in
`motion practice prior).
`
`Garmin Ltd.’s Corrected Answer to FAC
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`66.   Paragraphs 1-65 are incorporated by reference he