throbber
Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 1 of 22 Page ID #:872
`
`
`JEAN-PAUL CIARDULLO, CA Bar No. 284170
` jciardullo@foley.com
`FOLEY & LARDNER LLP
`555 South Flower Street, Suite 3300
`Los Angeles, CA 90071
`Telephone: 213-972-4500
`Facsimile: 213-486-0065
`
`ELEY O. THOMPSON (pro hac vice)
` ethompson@foley.com
`FOLEY & LARDNER LLP
`321 N. Clark Street, Suite 2800
`Chicago, IL 60654-5313
`Telephone: 312-832-4359
`Facsimile: 312-83204700
`
`LUCAS I. SILVA (pro hac vice)
`lsilva@foley.com
`RUBEN J. RODRIGUES (pro hac vice)
`rrodrigues@foley.com
`FOLEY & LARDNER LLP
`111 Huntington Avenue, Suite 2500
`Boston, MA 02199-7610
`Telephone: (617) 342-4000
`Facsimile: (617) 342-4001
`
`Attorneys for Plaintiff
`Philips North America LLC
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`
` Case No. 2:19-cv-06301-AB-KS
`PHILIPS NORTH AMERICA, LLC’S
`ANSWER TO DEFENDANT GARMIN
`INTERNATIONAL, INC.’S
`COUNTERCLAIMS
`
`
`
`
`
`
`
`Philips North America LLC,
`
`
`
`
`Plaintiff,
`
`
`v.
`
`Garmin International, Inc.
`and Garmin Ltd.,
`
`
`
`
`Defendants.
`
`
`
`
`
`PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
`
`

`

`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 2 of 22 Page ID #:873
`
`
`PHILIPS NORTH AMERICA, LLC’S
`ANSWER TO DEFENDANT GARMIN INTERNATIONAL, INC’S
`COUNTERCLAIMS
`
`Plaintiff Philips North America LLC (“Philips”), by and through its undersigned
`counsel, hereby answer Defendant and Counterclaimant Garmin International, Inc.’s
`(“Garmin
`International”) counterclaims. Philips denies Garmin
`International’s
`Counterclaims unless as expressly admitted in the following paragraphs:
`PARTIES, JURISDICTION, VENUE
`Counterclaim Plaintiff Garmin International has two engineering facilities in
`1.
`
`this District.
`ANSWER:
`Admitted.
`
`Counterclaim Defendant Philips North America, LLC is a Delaware limited
`2.
`liability company.
`ANSWER:
`Admitted.
`
`This Court has subject matter jurisdiction over Garmin International’s
`3.
`
`counterclaims pursuant to 35 U.S.C. § 271 et seq., and 28 U.S.C. §§ 1331, 1338, and 2201-
`02.
`
`ANSWER:
`Admitted.
`
`Neither party challenges venue for this action alone.
`4.
`ANSWER:
`Admitted.
`
`
`
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` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 3 of 22 Page ID #:874
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`
`MATERIAL FACTS
`Philips alleges, “For years, Philips has repeatedly offered to license rights in
`5.
`
`the Patents-in-Suit to Garmin, but Garmin has repeatedly refused to accept Philips’ offers
`to license.” (FAC, Dkt. No. 45, ¶10.)
`ANSWER:
`Admitted.
`
`Philips’ Complaint and First Amended Complaint both allege that Philips
`6.
`
`provided pre-suit notice to Garmin of each of the Patents-in-Suit.
`ANSWER:
`Philips admits that Philips provided actual notice of infringement to Garmin of the
`Patents-in-Suit either before or with the filing of the Complaint and the First Amended
`Complaint. Otherwise, denied.
`
`7.
`
`Garmin.
`ANSWER:
`Philips admits that Philips provided actual notice of infringement to Garmin of the
`Patents-in-Suit either before or with the filing of the Complaint and the First Amended
`Complaint. Otherwise, denied.
`
`Philips never mentioned the ’377 or ’958 Patents to Garmin prior to filing
`8.
`
`the instant Complaint, Dkt. No. 1.
`ANSWER:
`Philips admits that Philips provided actual notice of infringement to Garmin of the
`Patents-in-Suit either before or with the filing of the Complaint and the First Amended
`Complaint. Otherwise, denied.
`
`
`But, prior to suit, Philips never mentioned four of the six Patents-in-Suit to
`
`
`
`
`
`2
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` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 4 of 22 Page ID #:875
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`
`Philips never provided copies of the ’377 or ’958 Patents to Garmin prior to
`9.
`
`filing the instant Complaint.
`ANSWER:
`Philips admits that Philips provided actual notice of infringement to Garmin of the
`Patents-in-Suit either before or with the filing of the Complaint and the First Amended
`Complaint. Otherwise, denied.
`
`10. Philips never mentioned the ’192 or ’542 Patents to Garmin prior to filing the
`
`instant Complaint.
`ANSWER:
`Philips admits that Philips provided actual notice of infringement to Garmin of the
`Patents-in-Suit either before or with the filing of the Complaint and the First Amended
`Complaint. Otherwise, denied.
`
`11. Philips never provided copies of the ’192 or ’542 Patents to Garmin prior to
`
`filing the instant Complaint.
`ANSWER:
`Philips admits that Philips provided actual notice of infringement to Garmin of the
`Patents-in-Suit either before or with the filing of the Complaint and the First Amended
`Complaint. Otherwise, denied.
`
`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”).
`ANSWER:
`Philips admits that there was a Case No.: HP-2007-000068, between Garmin
`(Europe) Limited, Garmin International, Inc. and Koninklijke Philips N.V., a company
`existing under the laws of the Kingdom on the Netherlands, before the Royal Courts of
`
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`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 5 of 22 Page ID #:876
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`
`
`
`Justice of England and Wales (the ’068 foreign litigation), and that the ’068 foreign
`litigation is not relevant to this action. Otherwise, denied.
`
`13. Philips’ First Amended Complaint fails to mention the UK Litigation.
`ANSWER:
`Philips admits that there was the ’068 foreign litigation and that the ’068 foreign
`litigation is not relevant to this action. Otherwise, denied.
`
`14. EP1,076,806B1 is the PCT patent in the same family as the ’007, claiming
`
`priority to the ’007 Patent
`ANSWER:
`Denied.
`
`15. The claims of the EP1,076,806B1 are indistinguishable from those of the ’007
`
`Patent.
`ANSWER:
`Denied.
`
`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:
`ANSWER:
`interpretation of claims of
`the construction and
`that
`Philips admits
`EP(UK)1,076,806B1 (the ’806 foreign UK patent) was performed under the procedural
`rules and substantive laws of the Royal Courts of Justice of England and Wales and is not
`relevant to this action. Otherwise, denied.
`
`17. Claims of the EP1,076,806B1 were invalidated in the UK Litigation.
`ANSWER:
`
`
`
`
`
`
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` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 6 of 22 Page ID #:877
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`Philips admits that some claims of ’806 foreign UK patent were found to satisfy the
`procedural rules and substantive laws of the Royal Courts of Justice of England and Wales
`and not in the court of first instance and that settlement occurred during appeal, such
`findings being irrelevant to this action. Otherwise, denied.
`
`
`18.
`In the UK Litigation, KONINKLIJKE PHILIPS N.V admitted that some of
`
`the claims of EP1,076,806B1 were anticipated.
`ANSWER:
`Philips admits that the ’068 foreign litigation was based on foreign procedural rules
`and substantive laws of the Royal Courts of Justice of England and Wales, and that the
`’068 foreign litigation is not relevant to this action. Otherwise, denied.
`
`In the UK Litigation, KONINKLIJKE PHILIPS N.V accepted that Claim 1 of
`19.
`
`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 satellitebased navigation
`system (GPS) be used to assess the physical activity of individuals on earth?”, European
`Journal of Clinical Medicine (1997) 61, 338-339) (“Schutz”).
`ANSWER:
`Philips admits that the ’068 foreign litigation was based on foreign procedural rules
`and substantive laws of the Royal Courts of Justice of England and Wales, and that the
`’068 foreign litigation is not relevant to this action. Otherwise, denied.
`
`20. The fitness trackers used in the 1997 Schutz study were Garmin trackers.
`ANSWER:
`Denied.
`
`21. Garmin International’s GPS-based fitness trackers were widely used before
`the priority date of the earliest asserted patent (1998).
`
`5
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`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 7 of 22 Page ID #:878
`
`
`ANSWER:
`Denied.
`
`In the UK Litigation, KONINKLIJKE PHILIPS N.V’s expert, Mr.
`22.
`Farringdon, was cross-examined about the CycleOps eTrainer system.
`ANSWER:
`Philips admits that Mr. Farringdon was cross-examined about the CycleOps eTrainer
`under foreign procedural rules and substantive laws of the Royal Courts of Justice of
`England and Wales, and that the ’068 foreign litigation is not relevant to this action.
`Otherwise, denied.
`
`In the UK Litigation, Mr. Farrington accepted that the Cyclops eTrainer
`23.
`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.
`ANSWER:
`Denied.
`
`24. Garmin International has provided detailed non-infringement and invalidity
`arguments to Philips over the past three years.
`ANSWER:
`Philips admits that Garmin has made baseless non-infringement and invalidity
`arguments to Philips for at least the past three years during licensing negotiations.
`Otherwise, denied.
`
`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.
`ANSWER:
`
`
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`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 8 of 22 Page ID #:879
`
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`Philips admits licensing discussions with Garmin for at least the past three years.
`Otherwise, denied.
`
`26. Garmin Ltd. supplied non-infringement and invalidity arguments as to each
`patent.
`ANSWER:
`Philips admits that Garmin has made baseless non-infringement and invalidity
`arguments to Philips for at least the past three years during licensing negotiations.
`Otherwise, denied.
`
`27. Garmin Ltd. invalidated the European counterpart of one of those patents
`(EP1,076,806B1) in January of this year.
`ANSWER:
`Philips admits that some claims of ’806 foreign UK patent were found to satisfy the
`procedural rules and substantive laws of the Royal Courts of Justice of England and Wales
`and not in the court of first instance and that settlement occurred during appeal, such
`findings being irrelevant to this action. Otherwise, denied.
`
`In its original Complaint, Dkt. No. 1 (“Complaint”), Philips asserts but two
`28.
`(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.
`ANSWER:
`Denied.
`
`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.
`ANSWER:
`
`
`
`
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 9 of 22 Page ID #:880
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`Denied.
`
`
`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
`ANSWER:
`Philips repeats and incorporates by reference as if fully set forth herein the answers
`to Paragraphs 1-29.
`
`
`The ’007 Patent
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`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
`ANSWER:
`Denied.
`
`32. Specifically, examples of prior art for the ’007 patent is detailed in
`
`paragraphs 14-23, supra.
`ANSWER:
`Philips admits that Garmin purports to identify alleged prior art in its Answer and
`Counterclaims. Otherwise, denied.
`
`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.
`ANSWER:
`Denied.
`
`34.
`
`In the UK Litigation, Koninklijke Philips N.V. accepted that GPS II+,
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`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 10 of 22 Page ID #:881
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`Hingham, and Schultz all disclosed a product falling within the scope of claim 1 of
`EP1,076,806B1.
`ANSWER:
`Philips admits that the ’068 foreign litigation was based on foreign procedural
`rules and substantive laws of the Royal Courts of Justice of England and Wales, and that
`the ’068 foreign litigation is not relevant to this action. Otherwise, denied.
`
`35. The claims of EP1,076,806B1 and the asserted ’007 patent are
`
`indistinguishable.
`ANSWER:
`Denied.
`
`36. GPS II+, Hingham, and Schultz are each invalidating prior art for the ’007.
`ANSWER:
`Denied.
`
`37. 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, which is
`incorporated by reference herein.
`b. Hingham is described in Exhibit A, Dkt. No. 23-1, ¶¶199- 204, which is
`incorporated by reference herein.
`c. GPS II+ is described in Exhibit A, Dkt. No. 23-1, ¶¶205- 207, which is
`incorporated by reference herein.
`
`
`
`
`
`ANSWER:
`Philips admits having a copy of Exhibit A and that the ’068 foreign litigation was
`based on foreign procedural rules and substantive laws of the Royal Courts of Justice of
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`CASE NO. 2:19-cv-06301-AB-KS
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 11 of 22 Page ID #:882
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`England and Wales, and that the ’068 foreign litigation is not relevant to this action.
`Otherwise, denied.
`
`38. Garmin 45 anticipates and/or renders obvious the claims of the ’007 patent.
`ANSWER:
`Denied.
`
`39. Philips was aware of the Garmin 45 prior to filing its Complaint in this
`matter.
`ANSWER:
`Philips admits having a copy of Exhibit A and that the ’068 foreign litigation was
`based on foreign procedural rules and substantive laws of the Royal Courts of Justice of
`England and Wales, and that the ’068 foreign litigation is not relevant to this action.
`Otherwise, denied.
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`The ’233 Patent
`40. Garmin International’s own products anticipates and/or render obvious the
`
`claims of the ’233 Patent.
`ANSWER:
`Denied.
`
`41. For example, Garmin International’s Dynastream products anticipate and/or
`
`renders obvious the claims of the ’233 patent.
`ANSWER:
`Denied.
`
`42. Philips was aware of one or more of the Dynastream products before it filed
`
`its Complaint in this matter.
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 12 of 22 Page ID #:883
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`ANSWER:
`Philips admits having possession of information regarding Dynastream as mentioned
`by Garmin as part of licensing discussions. Otherwise, denied.
`
`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.
`ANSWER:
`Denied.
`
`44. The Ericsson paper was provided to Philips by Garmin Ltd. prior to Philips’
`
`filing its Complaint in this matter
`ANSWER:
`Philips admits having received a document from Garmin referenced by Garmin as
`“1998 Ericsson paper” as part of licensing discussions. Otherwise, denied.
`
`
`The Quy Patents
`45. As for the asserted Quy patents, Philips knows the claims of those patents are
`
`invalid.
`ANSWER:
`Denied.
`
`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’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 examples.”
`ANSWER:
`
`
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 13 of 22 Page ID #:884
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`Philips admits that the quoted language was mentioned by Garmin as part of
`licensing discussions. Otherwise, denied.
`
`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.
`ANSWER:
`Denied.
`
`48. EP 1 247 229 B1 is the European patent arising from the US provisional to
`which the asserted Quy patents claim priority.
`ANSWER:
`Philips admits that EP1 247 229 B1 claims priority to US provisional application
`60/172,486, and that the ‘337 and ‘958 Quy patents claim priority to US provisional
`application 60/172,486. Otherwise, denied.
`
`49. Philips had in its possession Quy (US App No. 13/632,771) prior to filing its
`Complaint.
`ANSWER:
`Admitted.
`
`50. Philips had in its possession US Patent No. 5,955,667 prior to filing its
`Complaint.
`ANSWER:
`Philips admits that US Patent No. 5,955,677 was referenced in US Application Ser.
`No. 13/632,771. Otherwise, denied.
`
`51. Philips had in its possession U.S. Patent Nos. 6,002,982 prior to filing its
`Complaint.
`
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 14 of 22 Page ID #:885
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`ANSWER:
`Philips admits that US Patent No. 6,002,982 was referenced in US Application Ser.
`No. 13/632,771. Otherwise, denied.
`
`52. Philips had in its possession Mault (WO2001039089) prior to filing its
`Complaint.
`ANSWER:
`Philips admits that WO2001039089 was referenced in US Application Ser. No.
`13/632,771. Otherwise, denied.
`
`53. Philips had in its possession Lindberg (US Patent No. 7,069,552) prior to
`filing its Complaint.
`ANSWER:
`Philips admits that US Patent No. 6,002,982 was referenced in US Application Ser.
`No. 13/632,771. Otherwise, denied.
`
`54. Philips had in its possession Dean (WO 99/41682) prior to filing its
`Complaint.
`ANSWER:
`Philips admits that WO 99/41682 was referenced in US Application Ser. No.
`13/632,771. Otherwise, denied.
`
`55. Alone or in combination, the prior art cited in paragraphs 46-54 render the
`asserted Quy claims anticipated and/or obvious.
`ANSWER:
`Denied.
`
`56. Philips should pay Garmin International’s costs and attorney’s fees for
`13
`
`
`
` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
`
`

`

`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 15 of 22 Page ID #:886
`
`
`asserting the Quy ’377 and ’958 Patent claims.
`ANSWER:
`Denied.
`
`
`The ’192 Patent
`57. The ideas in Asserted Claim 20 were well known long before the priority date
`
`of the ’192 Patent.
`ANSWER:
`Denied.
`
`58. For example, the Dynastream products from the UK Litigation predate the
`
`’192 Patent.
`ANSWER:
`Denied.
`
`59. Philips knew of the Dynastream products before asserting the ’192 in this
`
`litigation.
`ANSWER:
`Philips admits having possession of information regarding Dynastream as mentioned
`by Garmin as part of licensing discussions. Otherwise, denied.
`
`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.
`ANSWER:
`Denied.
`
`
`
`
`
`
`14
`
`
`
` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
`
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`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 16 of 22 Page ID #:887
`
`
`b.
`
`c.
`
`d.
`
`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 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 min1 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).
`
`e.
`
`f.
`
`
`
`ANSWER:
`Denied.
`
`62. Claim 20 is also anticipated by “The Technology of AccelerometryBased
`
`Activity Monitors: Current and Future” published in Med. Sci. Sports Exerc., Vol. 37, No.
`11(Suppl), pp. S490-S500, 2005.
`ANSWER:
`Denied.
`
`
`
`
`
`
`15
`
`
`
` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
`
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`

`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 17 of 22 Page ID #:888
`
`
`b.
`
`c.
`
`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 vital parameters
`to determine if the physiological conditions are undesirable; and
`generating a warning indication when the user's physical condition is
`undesirable.
`
`d.
`
`ANSWER:
`Admitted.
`
`64. Setting aside the indefinite term (“undesirable”), Claim 13 is anticipated
`
`and/or rendered obvious by the Holter ECG, first commercially available in 1962.
`ANSWER:
`Denied.
`
`In addition to the above references, Claim 13 is anticipated and/or rendered
`65.
`
`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.
`16
`
`b.
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
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`10
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` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
`
`

`

`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 18 of 22 Page ID #:889
`
`
`c.
`
`1976;80(3):350–364.
`Seiver A. Critical care computing: past, present, and future. Critical
`Care Clinics. 2000;16(4):601–621.
`d. Booth F. Patient monitoring and data processing in the 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
`
`e.
`
`ANSWER:
`Denied.
`
`
`
`
`
`COUNTERCLAIM 2: INVALIDITY
`(Section 101, Patent Nos. ’077, ’233)
`66. Paragraphs 1-65 are incorporated by reference herein
`ANSWER:
`Philips repeats and incorporates by reference as if fully set forth herein the answers
`to Paragraphs 1-65.
`
`67. The claims of the ’007 patent are invalid as drawn toward unpatentable
`
`subject matter.
`ANSWER:
`Denied.
`
`68. Claim 1 is representative.
`ANSWER:
`Denied.
`
`
`
`
`
`
`
`17
`
`
`
` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
`
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`

`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 19 of 22 Page ID #:890
`
`
`
`69. Claim 1 is drawn toward abstract subject matter and fails to contain an
`
`inventive step.
`ANSWER:
`Denied.
`
`70. For example, all of the modules in Claim 1 are generic and the claim triggers
`
`preemption concerns (GPS, means for computing, means for displaying).
`ANSWER:
`Denied.
`
`71. The claims of the ’233 patent are invalid as drawn toward unpatentable
`
`subject matter.
`ANSWER:
`Denied.
`
`72. Claim 1 is representative.
`ANSWER:
`Denied.
`
`73. As with the ’007, all of the modules of the claim are generic and trigger
`
`preemption concerns.
`ANSWER:
`Denied.
`
`74. 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.
`
`18
`
`
`
`
`
`
`
` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
`
`1 2 3 4 5 6 7 8 9
`
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`

`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 20 of 22 Page ID #:891
`
`
`ANSWER:
`Denied.
`
`
`
`
`
`
`COUNTERCLAIM 3: INVALIDITY
`Section 112: Indefiniteness
`75. Paragraphs 1-74 are incorporated by reference herein.
`ANSWER:
`Philips repeats and incorporates by reference as if fully set forth herein the answers
`to Paragraphs 1-74.
`
`76. One or more of the Asserted Claims are invalid as indefinite.
`ANSWER:
`Denied.
`
`77. For example, the term “undesirable for the user” in Claim 13 of the ’542 patent
`
`is indefinite pursuant to 35 U.S.C. § 112.
`ANSWER:
`Denied.
`
`PRAYER FOR RELIEF
`
`Philips denies that Garmin International is entitled to any of the relief requested.
`
`19
`
`
`
` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
`
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`

`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 21 of 22 Page ID #:892
`
`
`FOLEY & LARDNER LLP
`
`/s/ Jean-Paul Ciardullo
`Jean-Paul Ciardullo
`Eley O. Thompson
`Lucas I. Silva
`Ruben J. Rodrigues
`FOLEY & LARDNER LLP
`Attorneys for Plaintiff
`Philips North America, LLC
`
`
`
`
`
`
`
`
`
`
`20
`
`
`
` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
`
` DATED: January 21, 2020
`
`
`
`
`
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`
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`

`

`Case 2:19-cv-06301-AB-KS Document 57 Filed 01/21/20 Page 22 of 22 Page ID #:893
`
`
`JURY TRIAL DEMAND
`
`Philips requests a trial by jury on all issues so triable.
`
` DATED: January 21, 2020
`
`
`
`
`
`
`
`
`
`FOLEY & LARDNER LLP
`
`/s/ Jean-Paul Ciardullo
`Jean-Paul Ciardullo
`Eley O. Thompson
`Lucas I. Silva
`Ruben J. Rodrigues
`FOLEY & LARDNER LLP
`Attorneys for Plaintiff
`Philips North America, LLC
`
`21
`
`
`
` PHILIPS’S ANSWER TO GARMIN INTERNATIONAL’S
`COUNTERCLAIMS
`CASE NO. 2:19-cv-06301-AB-KS
`
`1 2 3 4 5 6 7 8 9
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`

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