LoganTree LP v. Garmin International, Inc. et al
Filing
37
MEMORANDUM AND ORDER granting 32 Motion to Stay Case; denying without prejudice 26 Motion to Transfer Case. Within 14 days of the PTAB's decision, the parties must file a joint report advising the Court of the decision as well as their respective positions. Signed by District Judge Eric F. Melgren on 2/13/2019. (cm)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
LOGANTREE LP,
Plaintiff,
vs.
Case No. 17-1217-EFM-KGS
GARMIN INTERNATIONAL, INC. and
GARMIN USA, INC.,
Defendants.
MEMORANDUM AND ORDER
Defendants Garmin International, Inc., and Garmin USA, Inc. (collectively “Garmin”)
move this Court for a stay pending inter partes review (“IPR”) of the patent in suit. In addition,
Garmin moves the Court for an intra-district transfer for trial to Kanas City, Kansas. As explained
below, the Court grants Garmin’s motion to stay the case until the Patent Trial and Appeal Board
(“PTAB”) issues its decisions regarding Garmin’s IPRs. Furthermore, because the PTAB’s
decision could simplify the issues in the case such that Plaintiff LoganTree LP no longer has a
claim for infringement, the Court denies Garmin’s motion for intra-district transfer for trial without
prejudice.
I.
Factual and Procedural Background
Plaintiff LoganTree LP filed this patent infringement suit on August 23, 2017, alleging
that Garmin’s accelerometer-based activity trackers infringe its U.S. Patent No. 6,059,576 (the
‘576 Patent). In February 2018, Garmin filed two petitions for IPR with the PTAB covering 52 of
the 185 claims of the ‘576 Patent. LoganTree did not file a Patent Owner Preliminary Response,
and on August 30, 2018, the PTAB instituted the IPRs on all grounds. The PTAB is expected to
complete the proceedings and issue its final decisions by August 30, 2019.
In August 2018, Garmin moved for intra-district transfer for trial to Kansas City, Kansas
(Doc. 26). It also filed a Motion to Stay Case Pending Inter Partes Review of the ‘576 Patent
(Doc. 32). Because of Garmin’s motion to stay the case, the Court cancelled the scheduling
conference set for September 18, 2018. As a result, the parties have not served or completed any
discovery, infringement contentions, or invalidity contentions.
II.
Legal Standard
The Court considers three factors when deciding whether to stay judicial proceedings
pending IPR: “(1) whether discovery is complete and a trial date has been set; (2) whether a stay
will simplify the issues in question and trial of the case; and (3) whether a stay would unduly
prejudice or present a clear tactical disadvantage to the nonmoving party.”1 These factors help the
Court to determine “whether the benefits of a stay outweigh the inherent costs of postponing
resolution of the litigation.”2 In the District of Kansas, there is a “liberal policy in favor of granting
motions to stay proceedings pending the outcome of [the PTAB’s] reexamination or reissuance
1
Digital Ally, Inc. v. Taser Int’l, Inc., 2017 WL 1048351, at *2 (D. Kan. 2017) (citations omitted).
2
Id.
-2-
proceedings.”3 The moving party bears the burden of showing that a stay is appropriate, and this
showing must include more than the simple fact that an IPR was filed.4
III.
A.
Analysis
Garmin’s Motion to Stay
1.
Stage of Litigation
The first factor the court considers in determining whether to stay the case is the stage of
the proceedings. This case is in its infancy. Upon the filing of Garmin’s motion, the court
postponed the initial scheduling conference. No schedule has been set; no discovery has been
conducted; no depositions have been conducted, and no Markman hearing has been set. The
parties have only exchanged Rule 26 initial disclosures. LoganTree claims that this case has been
active for almost two years and should not be delayed any further. The Court acknowledges that
this lawsuit was initially filed in the Western District of Texas, but there was no action in the Texas
litigation that would weigh against granting a stay. Therefore, because this lawsuit is in its initial
stages, this factor weighs in favor of a stay.5
2.
Simplification of the Issues
The second factor the Court considers is whether a stay of this litigation pending Garmin’s
IPRs will result in the simplification or elimination of the issues for the Court to consider in this
case. The ’576 Patent contains 185 claims. Three of these claims are independent (claims 1, 13,
3
Id. (quoting Norred v. Medtronic, Inc., 2014 WL 554685, at *1 (D. Kan. 2014)).
4
Id. at *2.
5
See Norred, 2014 WL 554685, at *2 (finding that case was in its infancy where little discovery had taken
place even when the dispute arose two years before filing); Digital Ally, 2017 WL 1048351, at *2 (granting a stay
even when the parties conducted significant discovery, exchanged contentions, and claim construction).
-3-
and 20) and the remaining 182 claims are dependent on claims 1, 13, or 20. At this point,
LoganTree has not specifically identified which of the 185 claims in the ‘576 Patent it intends to
assert against Garmin.
Garmin’s IPRs challenge 50 the ‘576 Patent’s claims, including the three independent
claims.6 Garmin contends that the IPRs will cover all of the claimed subject matter that could
possibly be asserted against it in this litigation, and thus will simplify or eliminate all of the issues
for trial. In response, LoganTree argues that simply because the PTAB is going to review all of
the challenged claims does not necessarily mean that Garmin will be successful. LoganTree points
out that PTAB found that Garmin failed to show a reasonable likelihood of prevailing on 11 of the
50 challenged claims.7 LoganTree further argues that even if Garmin is successful on all of its
challenged claims, the subject matter of the 50 challenged claims does not overlap with the
remaining unchallenged claims of the ‘576 Patent.
After considering the parties’ arguments, the Court concludes that the PTAB’s decisions
will help simplify or eliminate the issues in this case. Although LoganTree contends that the
unchallenged claims do not contain overlapping subject matter with the challenged claims,
LoganTree has not identified a single claim that it could assert against Garmin in this litigation
that is not nearly identical to one challenged in the IPRs. Furthermore, the fact the PTO is only
reviewing some but not all of the ‘576 Patent’s claims does not mean that the PTAB’s decision is
6
Garmin did not separately challenge claim 13 under the same primary reference as claim 1 in its petitions
for IPR. Garmin argues, however, that because claims 1 and 13 have overlapping subject matter, the PTAB’s decision
on the patentability of claim 1 will carry over to claim 13.
7
The PTAB’s standard for instituting an IPR is “a reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Thus, a petitioner need only
establish a reasonable likelihood of proceeding on one claim for the PTAB to institute a review on all the challenged
claims. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (stating that when the PTAB initiates an IPR it must
review all of the challenged claims).
-4-
irrelevant or unhelpful to this litigation. Other courts have found that the benefits of a stay remain
even when only some of the litigated claims are being reviewed.8 As Garmin asserts, a stay
pending resolution of the IPRs has significant potential to eliminate asserted claims and invalidity
defenses in this case and will simplify the issues in this litigation. This factor weighs in favor of
a stay.
3.
Prejudice or Clear Tactical Disadvantage
The third factor that the Court must consider in determining whether to grant a stay is undue
prejudice or clear tactical disadvantage to the nonmoving party. In evaluating this factor, “courts
have taken a practical approach to determining whether the non-movant will suffer undue prejudice
from a stay. A court may deny a request for a stay where the movant has unjustifiably delayed
seeking reexamination, or where the stay will do nothing but delay the proceedings.”9 Mere delay
in the litigation does not establish undue prejudice.10
Garmin argues that a stay pending Garmin’s IPRs would not unduly prejudice LoganTree.
Garmin argues that LoganTree is not a competitor of Garmin and has no products on the market
embodying the claims of the ‘576 Patent. Thus, according to Garmin, any purported harm to
LoganTree may be fully compensated with money damages. Garmin also asserts that there is little
tactical disadvantage to LoganTree, where this litigation is in its early stages. IPRs must be
8
See Trading Technologies, Int’l, Inc. v. BCG Partners, Inc., 186 F. Supp. 3d 870, 875 (N.D. Ill. 2016)
(compiling cases); Destination Maternity Corp. v. Target Corp., 12 F. Supp. 3d 762, 769 (E.D. Pa. 2014) (“courts
have found significant potential for issue simplification even in cases where some but not all of the asserted claims
are subject to PTO review”).
9
Digital Ally, 2017 WL 1048351, at *3 (quoting Dane Techs., Inc. v. Gatekeeper Sys., Inc., 2013 WL
4483355, at *2 (D. Minn. 2013)).
10
Id. (citing Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1033 (C.D. Cal.
2013)).
-5-
disposed of within one year of being instituted, and thus Garmin argues that this should alleviate
any concerns LoganTree would have over delay.
LoganTree argues that it will be unduly prejudiced by a stay of this case. LoganTree
questions whether Garmin filed its IPRs in a timely manner, pointing out that the parties have been
litigating the issue for two years—first in the Western District of Texas and then in the District of
Kansas. LoganTree primarily argues, however, that a stay would be prejudicial because there is a
strong likelihood it will lose evidence during this time. According to LoganTree, the inventor of
the ‘576 Patent, Theodore Brann, has extensive health and medical issues, and a stay of any length
in this case would prevent Brann from being available to testify at trial.
The Court concludes that LoganTree will not be unduly prejudiced by a stay. Garmin does
not appear to have delayed in filing its IPRs, and in any event, the PTAB must issue its decisions
this year—by August 30, 2019.11 LoganTree does not dispute that it is not a competitor of Garmin,
and thus, LoganTree may be fully compensated by money damages.12 And, with regard to Brann’s
testimony, Garmin indicated in its Reply brief that it previously agreed to preserve Brann’s
testimony but LoganTree never proceeded with a preservation deposition.
Garmin further
indicates that it is not opposed to taking Brann’s deposition during the stay. Accordingly, this
factor weighs in favor of a stay.
4.
Conclusion
Because the three factors weigh in favor of a stay, the Court grants Garmin’s Motion to
Stay Pending Inter Partes Review. The case is stayed until the PTAB issues its decision in
11
35 U.S.C. § 316(a)(11).
12
PersonalWeb Tech., LLC v. Facebook, Inc., 2014 WL 116340, at *5 (N.D. Cal. 2014).
-6-
Garmin’s IPRs. To the extent LoganTree seeks to preserve Brann’s testimony during the stay,
Garmin must agree to his deposition. In addition, the parties must file a joint report advising the
Court of the PTAB’s decision as well as the parties’ respective positions for further proceeding
with this case within 14 days of the PTAB’s decision on Garmin’s IPRs.
B.
Garmin’s Motion for Intra-District Transfer for Trial
Garmin asks the Court to transfer the trial forum from Wichita to Kansas City. Garmin
contends that not a single document or witness relevant to this case is in Wichita, and in fact, the
situs for its witnesses and documents is in Olathe, which is 20 miles from the Kansas City
courthouse. The Court, however, declines to address Garmin’s arguments at this time. As
previously noted, Garmin contends that its petitions for IPR cover all of the claimed subject matter
that could be asserted against it in this litigation. Thus, if Garmin is successful, it could eliminate
any infringement issues present in this case. Accordingly, the Court denies Garmin’s motion for
intra-district transfer for trial without prejudice. Should this litigation continue to proceed after
the PTAB issues its decisions on Garmin’s IPRs, Garmin may refile its motion at that time.
IT IS THEREFORE ORDERED that Garmin’s Motion to Stay Litigation Pending Inter
Partes Review (Doc. 32) is GRANTED. The case is stayed pending resolution of Garmin’s IPRs.
To the extent LoganTree seeks to preserve Brann’s testimony during the stay, Garmin must agree
to his deposition.
IT IS FURTHER ORDERED that the parties must file a joint report advising the Court
of the PTAB’s decision as well as the parties’ respective positions for further proceeding with this
case within 14 days of the PTAB’s decision on Garmin’s IPRs.
-7-
IT IS FURTHER ORDERED that Garmin’s Motion for Intra-District Transfer for Trial
(Doc. 26) is DENIED WITHOUT PREJUDICE.
IT IS SO ORDERED.
Dated this 13th day of February, 2019.
ERIC F. MELGREN
UNITED STATES DISTRICT JUDGE
-8-
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?