Rothschild Connected Devices Innovations,LLC v. Garmin International, Inc.
MEMORANDUM OPINION re 11 First MOTION for Attorney Fees And Other Relief filed by Garmin International, Inc.. Signed by Magistrate Judge Roy S. Payne on 12/1/2017. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
ROTHSCHILD CONNECTED DEVICES §
GARMIN INTERNATIONAL, INC.,
The Court now considers Garmin International, Inc.’s Motion for Attorney’s Fees
and Other Relief [Dkt. # 11]. For the following reasons, the Court will DENY the motion.
This lawsuit started in February 2017, when Rothschild filed a complaint for in-
fringement of U.S. Patents 7,899,713 and 8,788,090. Although the ’713 Patent has only
recently been litigated, the ’090 Patent has been the subject of frequent litigation since
2015. Rothschild Decl. (May 9, 2016) [Dkt. # 14-5] ¶ 6 (“[T]his is the first time that the
’713 Patent has been asserted.”); Docket Navigator Screenshot [Dkt. # 11-5] (reflecting
that Rothschild has filed 69 cases asserting the ’090 Patent).
On March 15, Garmin’s counsel (Rachel Lamkin), wrongly believing Garmin had
been served, asked Rothschild’s attorney (Jay Johnson) for an extension of time to answer.
Lamkin Email (Mar. 15, 2017) [Dkt. # 14-2] at 5. Johnson granted the request and advised
Lamkin of Rothschild’s “early settlement program,” which would resolve the lawsuit for a
one-time payment of $75,000. Johnson Email (Mar. 15, 2017) [Dkt. # 11-6] at 4.
On March 21, Lamkin sent Johnson her analysis of the ’090 Patent, which concluded
at least Claim 1 was invalid under 35 U.S.C. § 101. Lamkin Letter [Dkt. # 11-2]; Lamkin
Decl. (Apr. 11, 2017) [Dkt. # 11-1] ¶ 2. Based on that analysis, Garmin asked Rothschild
to dismiss the case given it “ha[d] no reasonable chance of success on the merits of a Section 101 motion.” Lamkin Letter [Dkt. # 11-2]. Rothschild did not respond.
Over the next few weeks, Lamkin sent additional emails concerning her analysis.
On March 28, Lamkin asked whether Johnson had reviewed her letter, Lamkin Email (Mar.
28, 2017) [Dkt. 14-2] at 2, but Johnson did not respond. On April 3, Lamkin first alluded
to a forthcoming § 101 motion but was vague as to timing:
As you know, Judge Gilstrap requires that we meet an[d] confer regarding any Alice motion. Thus far you have chosen to ignore my communications on this subject, which is contra to Judge Gilstrap’s Section 101
standing order. Thus, please, today, engage in a good faith meet and confer
with me on this matter. Judge Gilstrap prefers that we speak over the phone
so please set forth your availability today. If you would instead prefer to communicate in writing, please—today—set forth your response to my letter, including any claim terms you believe need construction, and the constructions
Id. at 2. Rothschild still did not respond. Finally, on April 4, Lamkin wrote:
I will be filing the Alice motion at 5:00 (CT) EDTX time today. Given
your silence, I will assume that you agree that no claim construction is needed
for the Court to adjudicate an Alice motion. To the extent that you do believe
claim construction is needed, please send a list of the terms you believe need
construction and your proposed construction before 5:00 CT.
Id. at 1–2.
It is my understanding that you and Garmin in-house counsel have
both been in communication with Neal Massand on a related case and Neal
is anticipating a counteroffer from Garmin that will resolve both that case
and this case. Given those discussions, and that we have not yet served the
complaint in our case, it does not make sense to be talking about a 101 motion
or a meet and confer on that issue. Nevertheless, if you insist on filing a 101
motion, then RCDI’s position is that claim construction is needed (such that
the parties presumably disagree on that issue). I believe that is sufficient for
the required meet and confer. We will identify which claim elements need
construction and why (and identify intrinsic references for support) in connection with the joint submission required within 10 days after filing of the
Id. at 1. Lamkin replied that, “[a]s to Garmin not being served, you filed a summons on
March 1 and granted an extension to April 6 . . . so [I] now have a court set deadline for a
responsive pleading.” Id. Johnson and Lamkin later discussed the motion by phone, and
Lamkin told Johnson that Garmin might have mistook whether it was served in this case
or another case. Johnson Decl. (May 9, 2017) [Dkt. # 14-1] ¶ 11.
Later that day, Rothschild moved to dismiss Garmin without prejudice. Mot. to Dismiss [Dkt. # 7]. The Court granted the motion on April 9. Order [Dkt. # 8]. Garmin never
filed its § 101 motion.
Garmin then raised the subject of its fees for analyzing the ’090 Patent and preparing
a motion to dismiss:
We are contemplating a motion for attorney’s fees in your case and
one of the facts we think weighs in favor of attorney’s fees is, we believe, a
misrepresentation in your Complaint. Paragraph 3 states that RCDI has an
office at 1400 Preston Road, Suite 400, but there is no Suite 400 at that address. See attached floor plan. I telephoned the Executive Office Suites and
they confirm that there is no Suite 400 at the Preston Road facility. The virtual services manager told me that Suite 400 is used for entities paying for
virtual mail service.
That said, motions for attorney’s fees are serious and we would like to
extend every courtesy before filing. As such, please advise whether paragraph 3 could be correct in spirit if not in letter. Please confirm whether your
client has an actual office at 1400 Preston Road, and the number of that office.
If your client has an office or home address other than that address in Texas,
please so advise.
Lamkin Email (Apr. 10, 2017) [Dkt. # 14-4]. Rothschild did not respond, and Garmin filed
the present motion the next day.
Garmin now argues the Court can and should exercise its inherent authority to award
attorney’s fees because of Rothschild’s bad-faith conduct.
A federal court, acting under its inherent authority, may impose sanctions against
litigants or lawyers appearing before the court so long as the court makes a specific finding
that they engaged in bad-faith conduct. See Elliott v. Tilton, 64 F.3d 213, 217 (5th Cir.
1995) (citing Resolution Trust Corp. v. Bright, 6 F.3d 336, 340 (5th Cir. 1993), and In re
Thalheim, 853 F.2d 383, 389 (5th Cir. 1988)); see also Roadway Express, Inc. v. Piper,
447 U.S. 752, 765–66 (1980). This authority, for example, includes the power to vacate its
own judgment if a party or lawyer has perpetrated fraud on the court, the power to punish
for contempt, and the power to control admission to its bar and discipline attorneys who
appear before it. Chambers v. NASCO, Inc., 501 U.S. 32, 43–46 (1991)).
But a court’s inherent authority is not unbounded and must be exercised with restraint and discretion. See Roadway Express, 447 U.S. at 764. A court’s inherent authority
“is not a broad reservoir of power, ready at an imperial hand, but a limited source; an implied power squeezed from the need to make the court function.” FDIC v. Maxxam, Inc.,
523 F.3d 566, 591 (5th Cir. 2008) (quoting NASCO, Inc. v. Calcasieu Television & Radio,
Inc., 894 F.2d 696, 702 (5th Cir. 1990)). This power “may be exercised only if essential to
preserve the authority of the court.” Natural Gas Pipeline Co. of Am. v. Energy Gathering,
Inc., 86 F.3d 464, 467 (5th Cir. 1996); see also Positive Software Sols., Inc. v. New Century
Mortg. Corp., 619 F.3d 458, 460 (5th Cir. 2010); Amsted Indus. Inc. v. Buckeye Steel Castings Co., 23 F.3d 374, 378 (Fed. Cir. 1994) (“Without a finding of fraud or bad faith
whereby the ‘very temple of justice has been defiled,’ a court enjoys no discretion to employ inherent powers to impose sanctions.”).
Garmin contends Rothschild’s bad-faith conduct justifies sanctions under the
Court’s inherent authority. Garmin’s Mot. [Dkt. # 11] at 11–13. Such bad-faith conduct,
says Garmin, is supported by six “facts”:
Rothschild has filed 69 patent lawsuits concerning the ’090 Patent, but none
have reached claim construction, and most never pass the pleadings stage.
Rothschild made an early $75,000 settlement offer before any discussion of
sales, royalty, or other legitimizing facts.
Rothschild misrepresented to the Court it has a principal place of business in
Plano, and misrepresented to the State of Texas that its registered agent is a
Texas resident. See generally Garmin’s Mot. [Dkt. # 1] at 8–11.
Rothschild refused to meet and confer in good faith before the filing of a
§ 101 motion.
Rothschild dismissed Garmin just before Garmin intended to file its § 101
motion in order to keep the motion from being filed.
Rothschild regularly asserts patents it knows to be invalid.
Id. at 12.
As to (1) and (2), these facts are relevant to a determination of exceptionality under
§ 285, see Rothschild Connected Devices Innovations, LLC v. Guardian Protection Servs.,
Inc., 858 F.3d 1383, 1389–90 (Fed. Cir. 2017) (concluding the court misjudged Rothschild’s conduct in other litigation and that because of “the absence of evidence demonstrating that Rothschild engaged in reasonable conduct before the District Court, the undisputed evidence regarding Rothschild's vexatious litigation warrants an affirmative exceptional case finding [under 35 U.S.C. § 285]”), but they are not facts requiring use of the
Court’s inherent powers. Even if Rothschild’s position on the merits was weak, there is no
evidence Rothschild filed the lawsuit for reasons other than patent litigation. See, e.g., In
re Yorkshire, LLC, 540 F.3d 328 (5th Cir. 2008) (affirming sanctions under the court’s
inherent authority where a party instituted bankruptcy proceedings because he became dissatisfied with his available remedies and used judicial process to inflict injury on others
with no meaningful thought given to the actual purposes of the proceedings).
As to (3), while fraud on the Court might justify use of the Court’s inherent authority, even if Rothschild’s misrepresentations were intentional, Garmin does not show how
they materially impacted its position in this lawsuit or eroded the authority of the court.
Concerning (4) and (5), the apparent misunderstanding by Garmin that it had been
served, and was therefore under a deadline, mitigates the impact of these facts. In reality,
Garmin was not under a deadline, and it was not unreasonable for Rothschild to conclude
there was no urgent need to address Lamkin’s letter on the quick timeframe she expected.
Also, Garmin gave Rothschild no meaningful notice of its intent to file a § 101 motion. Although Lamkin’s April 3 email implied such a motion was on the horizon, it mentioned no date by when Garmin intended to file the motion. Once Rothschild realized the
short time-frame on which Garmin was operating, Rothschild questioned the need to act so
abruptly. While the Court does not fault Garmin for wanting quick resolution, the record
does not show Rothschild was intentionally delaying a conference with Garmin for some
As to (6), there is no evidence Rothschild knew the ’090 Patent was invalid. Moreover, Lamkin did not specifically address the claims of the ’713 Patent in her letter. Thus,
even if Rothschild conceded Garmin’s § 101 arguments and dismissed the ’090 Patentrelated claims, Garmin makes no convincing argument as to why Rothschild should have
been expected to dismiss the entire case.
Garmin understandably points to Rothschild Connected Devices Innovations, LLC
v. Guardian Protection Services, Inc., 858 F.3d 1383 (Fed. Cir. 2017) for support, Def.’s
Notice of Supp. & Controlling Authority [Dkt. # 19], but that case is distinguishable for a
number of reasons. Foremost, Rothschild concerns an exceptional-case analysis under 35
U.S.C. § 285, which applies a different standard. Moreover, the Federal Circuit’s opinion
hinged on Rothschild’s refusal to consider prior art proffered by Guardian along with incongruent statements made by Rothschild and its counsel. Rothschild, 858 F.3d at 1388–
89. The record here, however, contains no such prior art, allegedly incongruent related
statements, or evidence of willful blindness as to § 101 invalidity.
As a final matter, Garmin’s motion should also be denied because Garmin failed to
first meet and confer, in good faith, about the motion. See L.R. CV-7(h) (requiring “at a
minimum, a personal conference, by telephone or in person, between an attorney for the
movant and an attorney for the non-movant. . . . In the personal conference, the participants
must give each other the opportunity to express his or her views concerning the disputes”).
“Good faith requires honesty in one’s purpose to discuss meaningfully the dispute . . . . For
opposed motions, correspondence, e-mails, and facsimile transmissions do not constitute
compliance with the substantive component and are not evidence of good faith.” Id.
Here, Garmin initially filed the motion without a Certificate of Conference. Def.’s
Motion [Dkt. # 10]. After the District Clerk rejected the filing as deficient, Garmin refiled
the motion with a Certificate directed mainly to counsels’ discussions concerning the
never-filed § 101 motion. Def.’s Motion [Dkt. # 11] at 16–18. Although the Certificate
refers to Lamkin’s “attorney’s fees” email the previous day, (1) email does not satisfy the
our local rules; (2) the referred-to email only indicates the possibility of filing the present
motion; (3) the email was limited to only one aspect of Garmin’s motion (the address of
Rothschild’s principle office); and (4) one day is not a sufficient time to conclude Roth-
schild’s counsel was avoiding a conference. Thus, the record lacks any evidence of a meaningful discussion—or attempts by Garmin at a meaningful discussion—concerning the
merits of the present motion. For that reason alone, the motion should be denied.
The Court does not find an exercise of its inherent powers is essential to preserve
its authority in this case. Rothschild did not violate an outstanding order. Nor did Rothschild somehow “defile the temple of justice.” Moreover, Garmin failed to comply with
our local rules concerning the filing of its motion. As such, the Court concludes judicial
restraint is the better approach on these facts, and therefore DENIES the motion.
SIGNED this 3rd day of January, 2012.
SIGNED this 1st day of December, 2017.
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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