Case 2:19-cv-06301-AB-KS Document 79 Filed 07/09/20 Page 1 of 27 Page ID #:2199
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`LAMKIN IP DEFENSE
`RDL@LamkinIPDefense.com
`Rachael D. Lamkin (246066)
`One Harbor Drive, Suite 304
`Sausalito, CA 94965
`(916) 747-6091 Telephone
`Michelle L. Marriott (pro hac vice)
`michelle.marriott@eriseip.com
`Erise IP, P.A.
`7015 College Blvd.
`Suite 700
`Overland Park, KS 66211
`(913) 777-5600 Telephone
`(913) 777-5601 Facsimile
`
`Attorneys for Defendants Garmin
`International, Inc. and Garmin Ltd.
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`PHILIPS NORTH AMERICA LLC,
`
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`GARMIN INTERNATIONAL, INC.
`AND GARMIN LTD.,
`
`
`
`
`
`
`Defendants.
`
`
`
`
`
`
`
`Case No. 2:19-cv-06301-AB-KS
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`DEFENDANTS’ RESPONSIVE
`CLAIM CONSTRUCTION BRIEF
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`DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`Case 2:19-cv-06301-AB-KS Document 79 Filed 07/09/20 Page 2 of 27 Page ID #:2200
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`TABLE OF CONTENTS
`
`I.
`
`U.S. Patent No. 6,013,007 (the ’007 Patent) ........................................................ 1
`a. Means for Computing Athletic Performance Feedback Data from the
`Series of Time-Stamped Waypoint, Claims 1, 21, limitation (b) ............... 1
`b. Means For Presenting the Athletic Performance Feedback Data, Claims 1,
`21, limitation 1, 21(c) ................................................................................. 7
`c. Means For Suspending and Resuming Operation, Claim (7) ..................... 8
`d. Means For Exchanging GPS Route Waypoints, Claim 25 ......................... 9
`II. U.S. Patent No. 7,088,233 (the ’233 Patent) ........................................................ 9
`a. First Personal Device, Claims 1, 10, 14, 24, limitation (a) ........................ 9
`b. Governing Information Transmitted Between the First Personal Device
`and Second Device, Claim 1(c) ................................................................ 11
`c. Wireless Communication, Claims 1, 13, 15, 16 ....................................... 12
`d. Body or Physiological Parameters, Claims 8-9 ........................................ 13
`e. Location Determination Module, Claim 24 .............................................. 13
`f. Powered Down State, Claim 26 ................................................................. 13
`g. Means for Signaling, Claim 26 ................................................................. 14
`III. U.S. Patent No. 9,314,192 ...................................................................................... 14
`a. Any One of a Plurality of Positions, Claims 1, 20 ................................... 14
`b. Analyzing the Measured Value, Claims 1, 20 .......................................... 14
`c. Derive a Subject Related Value, Claims 1, 20 ......................................... 15
`IV. U.S. Patent No. 8,277,377: The Claims Should Be Construed In View Of
`The Applicant’s Disclaimers of Claim Scope .............................................................. 15
`a. “web-enabled wireless phone” ................................................................. 16
`b. “method for interactive exercising monitoring” and “sending the exercise-
`related information to an internet server (’377) ....................................... 17
`c. “calculation performed by the server based on the exercise-related
`information (’377) .................................................................................... 17
`d. “physiologic status (’377) ........................................................................ 18
`V. U.S. Patent No. 6,976,958: The Claims Should Be Construed To Clarify
`That They Are Directed To Disease Management, Not Exercise ........................... 19
`VI. U.S. Patent No. 9,801,542: The Asserted Claims – Which Claim
`Monitoring, Analyzing, and Warning Of “User” Specific “Undesirable”
`Conditions – are Indefinite ............................................................................................... 23
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`Case 2:19-cv-06301-AB-KS Document 79 Filed 07/09/20 Page 3 of 27 Page ID #:2201
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`TABLE OF AUTHORITIES
`
`Cases
`Alloc, Inc. v. ITC, 342 F.3d 1361 (Fed. Cir. 2003) ................................................. 22
`Aristocrat Techs. Austrl. Pty Ltd. v. Int’l Game Tech, 521 F.3d 1328 (Fed.
`Cir. 2008) ............................................................................................... 1, 4, 7
`Biogen Idec Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090 (Fed. Cir. 2013) ......... 16
`Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106 (Fed. Cir.
`2002) ............................................................................................................... 4
`Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328 (Fed. Cir. 2000) .................. 22
`Datamize, LLC v. Plumtree, 417 F.3d 1342 (Fed. Cir. 2005) ................................ 24
`Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361 (Fed. Cir.
`2012) ...................................................................................................... passim
`Gold v. Winget (In re NM Holdings Co., LLC), 407 B.R. 232 (Bankr. E.D.
`Mich. 2009) .................................................................................................. 11
`Guzik Tech. Enters., Inc. v. W. Dig. Corp., No. 11-CV-03786-PSG, 2013
`U.S. Dist. LEXIS 101538, at *24-25 (N.D. Cal. July 19, 2013) .................... 8
`In re Bakersfield Westar Ambulance, Inc., 123 F.3d 1243, 1248 (9th Cir.
`1997) ............................................................................................................... 8
`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) .................. 24
`Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456 (Fed. Cir. 1998) ........... 22
`Lopez v. Lopez (In re Lopez), Nos. 7-03014749 JA, 08-01182 J, 2009 Bankr.
`LEXIS 3594 (Bankr. D.N.M. Nov. 5, 2009) ................................................ 11
`Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340 (Fed. Cir. 2004) ............ 22
`Naylor v. Flavan, No. CV 08-03746 GAF (AJW), 2009 U.S. Dist. LEXIS
`132295, at *12 (C.D. Cal. Apr. 7, 2009) ........................................................ 8
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................... 3
`Pratt & Whitney v. United States, 170 Ct. Cl. 829, 345 F.2d 838 (1965) .............. 10
`Purdue Pharma L.P. v. Endo Pharm. Inc., 438 F.3d 1123 (Fed. Cir. 2006) .......... 22
`Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed.
`Cir. 2013) ....................................................................................................... 9
`Site Update Sols., LLC v. Accor N. Am., Inc., No. 5:11-cv-3306-PSG, 2015
`WL581175, at *5-6 (N.D. Cal. Feb. 11, 2015) .............................................. 7
`Southwall Techs., Inc. v. Cardinal IG Co, 54 F.3d 1570 (Fed. Cir. 1995) ............. 16
`Watts v. XL Sys., 232 F.3d 877 (Fed. Cir. 2000) .................................................... 22
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`Case 2:19-cv-06301-AB-KS Document 79 Filed 07/09/20 Page 4 of 27 Page ID #:2202
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`I.
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`U.S. Patent No. 6,013,007 (the ’007 Patent)
`a. Means for Computing Athletic Performance Feedback Data from the
`Series of Time-Stamped Waypoint, Claims 1, 21, limitation (b)
`There is no dispute that the “means for computing” limitation is a means-plus-
`function limitation that must be construed under 35 U.S.C. 112(6) (now 35 U.S.C.
`112(f)). The Parties further agree that the function of limitation (b) is “computing
`athletic performance feedback data from the series of time-stamped waypoints.” See
`Dkt. 77 at 5. When a patentee claims a computer-implemented invention and invokes
`means-plus-function limitations, the Federal Circuit has “consistently required that
`the structure disclosed in the specification be more than simply a general purpose
`computer or microprocessor.” Aristocrat Techs. Austrl. Pty Ltd. v. Int’l Game Tech,
`521 F.3d 1328, 1333 (Fed. Cir. 2008). This requirement seeks to avoid “pure
`functional claiming” and mandates that the patent must disclose sufficient
`algorithmic structure. Id. Where no structure appears in the specification, the
`question is “whether an algorithm was disclosed at all.” Id. at 1337. Here, there is
`none. The testimony of Philips’ expert, Dr. Martin, confirms that an off-the-shelf
`processor (Philips’ proposed structure1) would not even be able to calculate
`waypoints, and certainly could not perform the claimed “computing athletic
`performance feedback data” based on the waypoints, but would require special
`programming. Declaration of Rachael Lamkin (“Lamkin Dec.”) Ex. C (Martin Tr.)
`48:6-50:14 (“Q: But the key is that someone would need to program those off-the-
`shelf processors; correct? A. That is correct.”). And as Philips readily conceded in
`
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`1 Philips’ proposed structure, while a moving target, is insufficient. Neither a
`“processor and equivalents” (Lamkin Dec. Ex. B at 1; Dkt. 73-2) nor “a processor
`(CPU) that also utilizes memory and is connected to a GPS receiver module that
`provides geographical position information signals to the memory for storage” (Dkt.
`77 at 7) discloses the algorithmic structure required. See Ergo Licensing, LLC v.
`CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).
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`briefing filed yesterday in co-pending litigation, the specification discloses no such
`special programming:
`
`
`
`Lamkin Dec. Ex. F at p. 6. The claims are indefinite.
`Philips’ arguments cannot save the claims. By way of background, the
`claimed function references “time-stamped waypoints.” Waypoints are exact points
`of latitude and longitude. Dkt. 45-1 (’007 Patent), FIG 12, 2:33-35; Lamkin Dec. Ex.
`A (GPS Land Navigation) at 28. Time-stamped waypoints are said latitude and
`longitude points that have date and time information associated with those points by
`the “built-in processing unit.” Dkt. 45-1, 7:35-44. According to the claimed
`function, “athletic performance feedback data” is computed “from the series of time-
`stamped waypoints obtained by said GPS receiver.”
`Philips cherry picks the types of data the ’007 patent declares to be
`“performance data.” But, the ’007 is clearly sets forth the types of data that is
`calculated from time-stamped way points:
`During the exercise session, the GPS receiver module 604 continuously
`determines the athlete’s geographical position and stores it in the
`memory 608 along with other information such as the date and time that
`each position was acquired. From these positions and times,
`performance data such as elapsed distance, current and average speeds
`and paces, calories burned, miles remaining, and time remaining are
`calculated.
`Dkt. 45-1 at 7:40-48.2
`“[T]he specification ‘is always highly relevant to the claim construction
`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
`
`2 All underlined text is “emphasis added” unless otherwise noted.
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`Case 2:19-cv-06301-AB-KS Document 79 Filed 07/09/20 Page 6 of 27 Page ID #:2204
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`disputed term.’” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en
`banc). The ’007 specification makes clear that performance data calculated from
`time-stamped way points includes elapsed distance, current and average speeds and
`paces, calories burned, miles remaining, and time remaining.
`Philips tries to read certain of the claimed computation of “performance data”
`– such as “calories burned, miles remaining, and time remaining” from time-stamped
`waypoints – out of the patent. The reason is clear – there is no disclosure of
`algorithmic structure for these (or any other) performance data in the specification,
`and further, Philips’ expert never addressed them, either. But Philips cannot ignore
`the specification, “the single best guide to the meaning of a disputed term.” Philips,
`1315. Disregarding controlling law and the express teachings of the specification,
`Philips simply asserts, ipse dixit, that “calories burned, miles remaining, and time
`remaining” cannot be calculated from time-stamped waypoints and must be ignored.
`Compare Dkt. 45-1 at 7:40-48 with Dkt. 77 at 5-6.
`But Philips offers no evidentiary support for its position as to which types of
`performance data can be calculated with time-stamped waypoints, and which can’t.
`Indeed, Philips’ argument is wholly circular: because the specification does not teach
`how to calculate “calories burned, miles remaining, and time remaining” from time-
`stamped way points, then you must not be able to calculate that data from time
`stamped waypoints. This is in conflict with the express teachings of the patent –
`which identifies certain types of data (elapsed distance, current and average speeds
`and paces, calories burned, miles remaining, and time remaining) as performance
`data which is calculated from time-stamped waypoints, Dkt. 45-1 at 7:40-48 – and
`is in conflict with the law. Under well-established law, Philips may not pluck out the
`claim requirements that fail to support its case. The claimed function is “computing
`athletic performance feedback data” from time-stamped way points (11:12-14), and
`the specification tells us what that performance data can be (7:45-48). Philips is
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`bound to that intrinsic record. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296
`F.3d 1106, 1113 (Fed. Cir. 2002) (“It is improper to narrow the scope of the function
`beyond the claim language. It is equally improper to broaden the scope of the
`claimed function by ignoring clear limitations in the claim language.”).
`In order for limitation (b) to be definite, the specification of the ’007 must
`disclose a structure or algorithm that calculates “performance data such as elapsed
`distance, current and average speeds and paces, calories burned, miles remaining,
`and time remaining” from time-stamped waypoints. Dkt. 45-1 at 7:40-48. Philips
`can only point to a general processor. That cannot satisfy the legal requirements
`under Section 112(6) for a means-plus-function claim limitation. Ergo Licensing,
`1364-65; Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333
`(Fed. Cir. 2008).
`In an attempt to compensate for the lack of algorithmic structure in the
`specification, Philips relies on its expert, Dr. Martin, who testified—incorrectly as
`shown below—that POSITA would know how to calculate some of the performance
`data (“elapsed distance, current or average speed, or current or average pace from a
`series of time-stamped GPS waypoints”). Dkt. 77-6 (Martin Dec.) ¶18. Like Philips,
`Dr. Martin cherry picks the ’007 specification, completely ignoring the other types
`of performance data mandated by the specification. See Dkt. 45-1 at 7:45-48.
`First, Dr. Martin’s opinion is no evidence at all – “‘the testimony of one of
`ordinary skill in the art cannot supplant the total absence of structure from the
`specification.’ The prohibition against using expert testimony in this manner is a
`direct consequence of the requirement that the specification itself adequately
`disclose the corresponding structure.” Noah Sys., Inc. v Intuit Inc., 675 F.3d 1302,
`1318-19 (Fed. Cir. 2012) (quoting Default Proof Credit Card Sys., Inc. v Home
`Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005)). In contravention of this
`law, Philips argues that the algorithms for performing the function are so simple that
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`they do not need to be set forth in the specification. Not only is this contrary to
`established Federal Circuit precedent, but there is no support for such an argument
`in the evidentiary record. Philips relies solely on its expert, Dr. Martin.
`Second, Philips and Dr. Martin simply ignore the fact that any athletic
`performance monitor using only GPS in 1998 would have to account for Selective
`Availability (“SA”). Indeed, the specification notes that a “smart algorithm” can be
`used to filter out erroneous data intentionally created (in 1998) by the US
`Government to limit the accuracy of GPS for civilian applications. Dkt. 45-1 at 7:52-
`56. The intentional error created by the US Government was not trivial:
`Here’s how SA impacts speed and direction: If you’re walking south at
`5 mph, but SA is “going north” at 3 mph, your receiver will erroneously
`tell you you’re going 2 mph. If SA switches to south at 3 mph, your
`receiver will say you’re going 8 mph. If the direction SA is “going”
`relative to your true direction is lateral, then the direction of travel
`indicated by your receiver will also be inaccurate. If you are going north
`at 3 mph, but SA is “going west” at 3 mph, your receiver will tell you
`it’s going northwest at 4.2 mph.
`Lamkin Dec. Ex. A (GPS Land Navigation) at 10.
`Thus, a GPS-based “performance monitor” that did not correct for SA in 1998
`would be useless to an athlete attempting to track athletic performance. See id.
`Indeed, unless an athlete could run faster than a 4-minute mile (15 mph), it was “not
`possible” to receive accurate speed and direction of travel information without
`correcting for SA. Id. at 19; see also id. at 10-11, 29, 43. Dr. Martin admitted in
`deposition that the ’007 patent does not disclose an algorithm for correcting for SA.
`Lamkin Dec. Ex. C (Martin Tr.) 76:5-11. The fact that only a “smart algorithm” (but
`not actual algorithm) is disclosed for accounting for error correction further shows
`that Claims 1 and 21 are fatally indefinite. See Ergo Licensing, 1364-65.
`Further, even setting aside SA, Philips’ cherry-picked performance data
`(elapsed distance of an athlete; current or average speed of an athlete; current or
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`average pace of an athlete) cannot carry the day. Dr. Martin testified that a POSITA
`would know how to calculate performance data such as elapsed distance of an
`athlete; current or average speed of an athlete; current or average pace of an athlete
`using “basic math” to calculate the distance between two points. Dkt. 77-6, ¶18-25.
`Again, Dr. Martin makes no attempt to account for performance data such as calories
`burned, miles remaining, and time remaining. See Dkt. 45-1 at 7:40-48. But even as
`to the performance data he does address, he fails to apply his basic math to the actual
`problem at hand: calculating performance data using GPS provided time-stamped
`waypoints. Indeed, Dr. Martin admits he is “not an expert in how the GPS satellite
`system [sic] works[.]” Lamkin Dec. Ex. C (Martin Dep.) at 79:21-80:2. Which is
`made plain by his failure to account for Selective Availability and other features of
`GPS data, such as the distortions that occur with elevation and winding trails:
`You also need to be aware that the distances your receiver calculates
`between waypoints are straight lines on the surface of the WGS84
`ellipsoid - approximately mean sea level. This means you must allow
`for any extra distance caused by winding trails, plus the extra distance
`caused by the slope between locations at different elevations. On a 10
`degree slope the actual straight-line ground distance will be less than 2
`percent more than the GPS receiver indicates. On a 45 degree slope the
`actual straight-line ground distance will be over 40 percent more than
`the receiver indicates.
`Lamkin Dec. Ex. A (GPS Land Navigation) at 33.
`Martin’s “simple math” accounts for none of these GPS errors. Indeed,
`Martin’s “distance between two points” simple math completely fails to account for
`how the “athletic performance feedback data” could be computed “from the series
`of time-stamped waypoints obtained by said GPS receiver.”3 See id., at 6-8.
`
`3 Moreover, the evidentiary record defeats Philips’ suggestion that the required
`computing is merely undisclosed “basic high school” geometry and trigonometry.
`Dkt. 77 at 9. This is not a case where it is undisputed that there is only a single
`(cont’d)
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`Finally, Dr. Martin testified that an off the shelf processor could not perform
`even Philips’ cherry picked simple math calculations; the processor would require
`special programming. Lamkin Dec. Ex. C (Martin Tr.) at 48:6-50:14. As such, a
`generic processor cannot be the disclosed structure. Ergo Licensing, 1364-65;
`Aristocrat, 1333. “Because a computer generally cannot perform a particular
`function without further instructions, identifying a general purpose computer does
`not satisfy the ‘structure’ requirement for a computer function.” Site Update Sols.,
`LLC v. Accor N. Am., Inc., No. 5:11-cv-3306-PSG, 2015 WL581175, at *5-6 (N.D.
`Cal. Feb. 11, 2015) (citing Ergo Licensing).
`There is simply no disclosed algorithm covering the entirety of limitation (b).
`Claims 1 and 21 are indefinite under well-established law.
`b. Means For Presenting the Athletic Performance Feedback Data,
`Claims 1, 21, limitation 1, 21(c)
`Garmin’s primary argument is that the means for presenting is wired
`headphones and, optionally, text display. Dkt. 75 at 5-6. Philips’ expert agrees with
`Garmin, testifying in his deposition that the means for presenting was audio through
`headphones. Lamkin Dec. Ex. C (Martin Tr.) at 98:7-20. Dr. Martin’s judicial
`admission is fatal to Philips’ proposed construction, which seeks to reverse the
`requirement (“a display and/or audio headphones”) to make “audio” optional rather
`than mandatory. Naylor v. Flavan, No. CV 08-03746 GAF (AJW), 2009 U.S. Dist.
`
`equation for determining each of the claimed athletic performance feedback data,
`rendering Philips’ reliance on Alfred E. Mann inapposite. Dkt. 77 at 7, 9 (citing
`Mann, 841 F.3d 1334, 1345 (Fed. Cir. 2016)). In Mann, both sides agreed that a
`POSITA would know to apply Ohm’s law to convert voltage to impedance –
`impedance “is always calculated based on the ratio of voltage to current.” Id. No
`such facts exist here. To the contrary, Dr. Martin’s “basic math” opinions do not
`even factor in the use of GPS time-stamped waypoints – i.e., exact points of latitude
`and longitude that are stored with date and time information – at all. Indeed, the
`evidence is clear that GPS waypoints do not involve single point to single point
`calculations. See, e.g., GPS Land Navigation, Lamkin Dec. Ex. A, pps. 6-9.
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`Case 2:19-cv-06301-AB-KS Document 79 Filed 07/09/20 Page 11 of 27 Page ID #:2209
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`LEXIS 132295, at *12 (C.D. Cal. Apr. 7, 2009) (“Plaintiff’s declaration under
`penalty of perjury . . . constitutes a judicial admission.”); In re Bakersfield Westar
`Ambulance, Inc., 123 F.3d 1243, 1248 (9th Cir. 1997).
`Garmin also notes that the technical components for audio presentation such
`as an amplifier must also be included in the structure because the patent teaches that
`said components are included. Dkt. 45-1 at 5:50-55. In its Responsive Brief, Philips
`again simply announces,
`ipse dixit,
`that Garmin’s proposed construction
`incorporates items that “do not present anything to an athlete.” Dkt. 77 at 9. Philips
`cites no evidence in support of its attorney argument. Because the ’007 Patent
`teaches that items such as an amplifier, a synthesizer, and a microcontroller
`generating audio output are part of the structure performing the function (5:50-55),
`they are to be included in the construction of that structure. Guzik Tech. Enters., Inc.
`v. W. Dig. Corp., No. 11-CV-03786-PSG, 2013 U.S. Dist. LEXIS 101538, at *24-
`25 (N.D. Cal. July 19, 2013).
`c. Means For Suspending and Resuming Operation, Claim (7)
`Both Parties point to the same section of the specification – 8:5-13 – for the
`only relevant disclosure relating to the claimed function of “suspending and
`resuming operation of said means for computing when a speed of the athlete falls
`below a predetermined threshold.” Dkt. 77 at 10. That section discloses only a “smart
`algorithm,” but no actual algorithm. Id. Philips understands that the disclosure of a
`secret “smart algorithm” is no disclosure at all. As such, Philips declares that Claim
`7 requires a “dumb” algorithm. Dkt. 77 at 10:27. But the specification says the
`opposite, and in any event fails to disclose any algorithm (smart or dumb) to perform
`the claimed function. Dkt. 45-1 8:5-10. Equally improper is Philips’ request that the
`Court rewrite the claimed function to excise part of the claim language based on
`what Philips believes was “intended by the claim language.” Dkt. 77 at 11. Because
`the ’007 fails to disclose an algorithm that covers Claim 7, the claim is indefinite.
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`Case 2:19-cv-06301-AB-KS Document 79 Filed 07/09/20 Page 12 of 27 Page ID #:2210
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`
`d. Means For Exchanging GPS Route Waypoints, Claim 25
`Both Parties point to the same section of the specification for the Section
`112(6) disclosure, 9:59-61.4 But there is neither a structure nor an algorithm
`disclosed at that citation. And exchanging GPS waypoints was a complex procedure,
`that—in 1997—only worked with special software and Garmin GPS receivers. (See
`GPS Land Navigation, p. 45.) None of that is disclosed, and Philips’ argument that
`the “claim itself” discloses the structure (i.e, an Internet web site) purports to
`impermissibly substitute the claimed function for structure with no support for doing
`so. This claim is indefinite. Ergo Licensing, 1363.
`II. U.S. Patent No. 7,088,233 (the ’233 Patent)
`a. First Personal Device, Claims 1, 10, 14, 24, limitation (a)
`In its brief, Philips fails to address the well-established law governing the
`construction of this term. See Regents of the Univ. of Minn. v. AGA Med. Corp., 717
`F.3d 929, 936 (Fed. Cir. 2013) (“When a patent thus describes the features of the
`‘present invention’ as a whole, this description limits the scope of the invention.”)
`(collecting cases).
`The ’233 Patent makes clear that the “present invention” is a personal medical
`device. See Dkt. 45-2 at 1:20-28, 2:38-39, 2:44-48, FIGS 1, 4A-4F, 5. Indeed,
`the ’233 states, “[t]he present invention . . . specifically [relates to] medically
`distressed persons and those in whom an [sic] personal medical device has been
`deployed[.]”. Id. at 1:20-28. Philips’ silence regarding this well-established law
`speaks volumes.
`Further, the only device disclosed in the ’233 specification with the features
`of the claimed “first personal device” is “personal medical device (PMD) 100[.]”
`Dkt. 45-2 at 3:13. There are no other examples or embodiments described that have
`
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`4 Philips points to 9:52-62, but 9:52-58 does not discuss GPS waypoints.
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`these features. This is evident by comparing PMD [Personal Medical Device] 100’s
`block diagram (Fig. 2) with the components recited by the claims:
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`Compare id., FIG. 2, 3:18-59 with id., 14:62-15:4, 15:32-33, 15:42-46. The
`specification attributes the claimed “first personal device” features to the PMD 100.
`PMD [Personal Medical Device] 100 is the only device disclosed in the ’233 Patent
`that includes all features of the claimed “first personal device.”
`Finally, in another matter wherein Philips’ has asserted the ’233 Patent,
`Philips repeatedly describes the ’233 claims as drawn toward “personal medical
`communication systems.” Lamkin Decl. Ex. D (Philips v. Fitbit First Amended
`Complaint) ¶¶41, 83, 85-88. Patent claims are “not ‘like a nose of wax, which may
`be turned and twisted” left in one matter and right in another. Pratt & Whitney v.
`United States, 170 Ct. Cl. 829, 842, 345 F.2d 838, 846-47 (1965) (“Courts have long
`held that a claim is not ‘like a nose of wax, which may be turned and twisted in any
`direction’[.]” (quoting White v. Dunbar, 119 U.S. 47, 51 (1886).) Philips’
`allegations in the other matter should be accorded evidentiary weight here. Lopez v.
`Lopez (In re Lopez), Nos. 7-03014749 JA, 08-01182 J, 2009 Bankr. LEXIS 3594, at
`*9 (Bankr. D.N.M. Nov. 5, 2009); Gold v. Winget (In re NM Holdings Co., LLC),
`407 B.R. 232, 285 (Bankr. E.D. Mich. 2009).
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`Case 2:19-cv-06301-AB-KS Document 79 Filed 07/09/20 Page 14 of 27 Page ID #:2212
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`b. Governing Information Transmitted Between the First Personal
`Device and Second Device, Claim 1(c)
`The claim says “governing information transmitted” between devices, but
`Philips asks this Court to construe the limitation as “controlling the transmission of
`information” between devices. Dkt. 77 at 11. Even under a plain-meaning reading,
`the actual claim language means the information being transmitted between devices
`is actively being governed, while Philips’ proposed construction merely requires the
`initial transmission of information to be “controlled.”
`Philips has articulated no sound reason for changing the order of the words in
`the claim. When asked about the re-ordering, Philips’ expert, Dr. Martin, admitted
`that Philips’ counsel proposed the re-ordering without consulting him. Lamkin Dec.
`Ex. C (Martin Tr.) 115:8-17, 135:15-18, 138:22-139:1.
`Changing the claim language from “governing” to “controlling” loses key
`meaning. Governing means “to exercise continuous sovereign authority over,”
`according to Philips’ own evidence. Dkt. No. 77-8, at 2; Dkt. 75 at 8-9. Garmin
`agrees with Dr. Martin that the claim limitation requires constant monitoring to
`provide different levels of access depending on the persons using the devices.
`Lamkin Dec. Ex. C (Martin Tr.) 117:11-121:3. Garmin agrees with Dr. Martin that
`the claim limitation requires constant monitoring of the information flow to assure
`that the right medication is being dispensed and the right person (e.g., doctor or
`EMT) is doing the dispensing. See id. Garmin agrees with Dr. Martin that different
`persons using the same medical device should be given different levels of access. Id.
`Thus, the term actually used in the limitation, “governing,” conveys the better
`meaning of the claim: the security mechanism constantly surveys (exercises
`“continuous sovereign authority” over) the transmission of information between the
`medical device and the second device, making sure in each instance the right level
`of access is being provided to the right person using the device.
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