Navico, Inc. et al v. Garmin International, Inc. et al

Filing 219

ORDER ADOPTING REPORT AND RECOMMENDATION re 200 Report and Recommendation. Garmins Motion for Partial Summary Judgment 165 is DENIED. Signed by Judge Rodney Gilstrap on 9/6/2017. (slo, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
NAVICO INC. and NAVICO
HOLDING AS,
Plaintiffs,
v.
GARMIN INTERNATIONAL, INC. and
GARMIN USA, INC.,
Defendants.

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No. 2:16-CV-00190-JRG-RSP

ORDER
The above entitled and numbered civil action was referred to United States Magistrate
Judge Roy S. Payne pursuant to 28 U.S.C. § 636. Now before the Court is the Report and Recommendation (Dkt. No. 200) by Magistrate Judge Payne, which recommends that Garmin’s Motion
for Partial Summary Judgment (Dkt. No. 165) be denied. Garmin has objected to the Report and
Recommendation. Garmin’s Objs. (Dkt. No. 209).
Garmin’s objections rely on Powertech Tech. Inc. v. Tessera, Inc., 660 F.3d 1301 (Fed. Cir.
2011). In Powertech, the Federal Circuit first noted its prior holding that “sales authorized under
a license do not become unauthorized or infringing sales because a licensee subsequently delays
royalty payments due under that license.” Powertech Tech., 660 F.3d at 1308 (quoting Tessera, Inc.
v. ITC, 66 F.3d 1357, 1370 (Fed. Cir. 2011). The court then vacated the district court’s dismissal
on jurisdictional grounds and remanded with instructions to apply that holding.
This case is distinguishable from Powertech because neither Garmin Int’l v. ITC, No. 20161572, 2017 WL 2558175 (Fed. Cir. June 13, 2017), nor Navico Inc. v. ITC, No. 2016-1533, 2017

WL 2558168 (Fed. Cir. June 13, 2017), have a legal holding applicable to the patents asserted in
this case. Rather, the Federal Circuit reviewed the ITC’s findings and conclusions as to obviousness concerning Navico’s U.S. Patents 8,305,840 and 8,605,550. While the appellate court held
certain claims of those patents obvious based on the combination of two prior art references also
at issue here (Tucker and Betts), Garmin, 2017 WL 2558175, at *6, the ’840 Patent and ’550 Patent
are not at issue in this case. Moreover, the appellate court did not hold there was a motivation to
combine Tucker and Betts as a matter of law, but rather that there was substantial evidence to
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support the ITC’s finding of such a motivation. Navico, 2017 2558168, at *6 (“There was substantial evidence to find such a motivation.”).
Having considered the Report and Garmin’s objections, the Court concludes Magistrate
Judge Payne’s Report and Recommendation is correct. IT IS THEREFORE ORDERED that the
Report and Recommendation (Dkt. No. 200) is hereby ADOPTED. Garmin’s Motion for Partial
Summary Judgment (Dkt. No. 165) is DENIED.

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 6th day of September, 2017.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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