Garmin Switzerland GMBH et al v. Navico, Inc. et alRESPONSED. Kan.October 20, 2017IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF KANSAS Garmin Switzerland GmbH, and Garmin Corporation, Plaintiffs, v. Navico, Inc., C-MAP USA, Inc., and C-MAP/Commercial, Ltd. Defendants. Case No. 2:16-cv-2706-CM-GLR GARMIN’S OPPOSITION TO DEFENDANT’S RENEWED MOTION TO STAY Garmin Switzerland GmbH and Garmin Corporation (“Garmin”) hereby respond in opposition to Navico, Inc., C-MAP USA, Inc., and C-MAP/Commercial, Ltd.’s (collectively “Defendants”) Renewed Motion to Stay. (D.I. 113, 114.) Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 1 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page i TABLE OF CONTENTS I. INTRODUCTION..............................................................................................................1 II. QUESTIONS PRESENTED AND SUMMARY OF ARGUMENT..............................3 A. Question 1—Have Defendants made a “clear showing” of some “compelling reason” warranting a stay while the Court decides the pending Motion for Partial Judgment where, as here, the underlying motion does not address Counts IV through VII (D.I 99), was filed before claim construction concluded, and discovery overlaps between the unchallenged counts of trademark counts (IV to VII) and the challenged patent counts (I to III)? ........................................................................................... 3 B. Question 2—Have Defendants carried their burden to show that a stay pending IPR is appropriate where the potential for simplification of issues is slim to non-existent and where Garmin would suffer undue prejudice?............. 4 III. A “STAY” WHILE THE COURT RULES ON THE PENDING MOTIONS IS NO STAY AT ALL—IT SIMPLY PUSHES DEFENDANTS’ BURDENS ON TO THE COURT AND PREJDUCES GARMIN’S LEGITIMATE INTERESTS .......................................................................................................................4 A. Standard and Burden—In this District, Stays In View of Pending Motions Exceedingly Rare Unless Absolute/Qualified Immunity Is At Issue...................... 5 B. Defendants Have Not Carried Their Burden to Show a “Compelling Reason” to Stay Discovery Pending Their Motion for Partial Judgment ............... 6 1. Finally Concluded—There is no scenario in which Defendants’ motion “finally concludes” this case in view of Garmin’s claims of trademark infringement, false designation, and unfair competition. ...........7 a. If the motion is granted as to all patent claims, this case will still proceed on Garmin’s counts of trademark infringement, false designation, and unfair competition .................7 b. After the Court’s decision on the motion for partial judgment, it is much more “likely” that this case will continue, not “conclude.”.................................................................8 2. Uncompleted Claim Construction Discovery—The parties have started, but not completed, the claim construction process. Granting a stay at this juncture will deprive Garmin and the Court of this information critical to resolving Defendants’ invalidity challenge. ...................................................................................................10 Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 2 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page ii 3. Unsupported Allegations of Waste and Burden—Defendants did not even try to articulate any actual waste or burden in their Motion. And because the same Navico products and features are accused of both patent and trademark infringement, there is substantial overlap and little risk of waste or burden. ...............................11 IV. THE IPR REVIEW OF ONE PATENT DOES NOT SUPPORT STAYING AN ENTIRE CASE INVOLVING OTHER PATENT AND NON-PATENT ISSUES..............................................................................................................................13 A. Standard and Burden—A Stay Pending IPR Is Inappropriate Where There Is Little Chance for Simplification of Issues and the Non-Movant Is Unduly Prejudiced ................................................................................................ 13 B. A Stay Pending IPR Is Inappropriate Here ........................................................... 14 1. Issue Simplification Is Non-Existent as to the ‘987 Patent and Garmin’s Trademark Infringement, False Designation, and Unfair Competition Claims ...................................................................................14 2. Simplification of Issues for the ‘703 Patent Is Doubtful ...........................15 3. Garmin Will Be Prejudiced by a Stay Pending IPR ..................................17 4. The Stage of the Case is Unimportant in View of the Other Factors ........19 V. CONCLUSION ................................................................................................................20 Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 3 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page iii TABLE OF AUTHORITIES Page(s) Cases ADA Sols., Inc. v. Engineered Plastics, Inc., 826 F. Supp. 2d 348 (D. Mass. 2011) ......................................................................................15 Alstom Grid LLC v. Certified Measurement, LLC, No. 15-72, 2016 WL 2869748 (D. Del. May 16, 2016) ..........................................................19 Anderson v. Bratton, No. 07-3017, 2008 WL 9758640 (D. Kan. July 28, 2008) ........................................................9 Aqua Prods., Inc. v. Matal, No. 2015-1177, 2017 WL 4399000 (Fed. Cir. Oct. 4, 2017)...................................................15 Bancorp Servs. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266 (Fed. Cir. 2012)................................................................................................10 Bonutti Research, Inc. v. Lantz Med., Inc., No. 14-609, 2015 WL 3386601 (S.D. Ind. May 26, 2015)..........................................14, 16, 19 Cargill Meat Solutions Corp. v. Premium Beef Feeders, LLC, No. 13-1168, 2015 WL 3937395 (D. Kan. June 26, 2015)..............................................5, 8, 12 Catron v. Colt Energy, Inc., No. 13-4073, 2014 WL 2828683 (D. Kan. June 23, 2014)......................................................10 CDX Diagnostics, Inc. v. U.S. Endoscopy Grp., Inc., No. 13-5669, 2014 WL 2854656 (S.D.N.Y. June 20, 2014) .............................................18, 20 Commodity Futures Trading Comm’n v. Chilcott Portfolio Mgmt., Inc., 713 F.2d 1477 (10th Cir. 1983) .................................................................................................5 Creative Consumer Concepts, Inc. v. Kreisler, 563 F.3d 1070 (10th Cir. 2009) .................................................................................................6 Dane Techs., Inc. v. Gatekeeper Sys., Inc., No. 12-2730, 2013 WL 4483355 (D. Minn. Aug. 20, 2013) .............................................13, 14 Digital Ally, Inc. v. Taser Int’l, Inc., No. 16-CV-2032-CM-TJJ, 2017 WL 1048351 (D. Kan. Mar. 20, 2017)................................18 Eagle View Techs., Inc. v. Xactware Sols., Inc., No. 15-07025, 2016 WL 4154136 (D.N.J. 2016) ....................................................................11 Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 4 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page iv Endotach LLC v. Cook Med. Inc., No. 13-1135, 2014 WL 852831 (S.D. Ind. Mar. 5, 2014) .....................................13, 14, 18, 19 Evello Investments N.V. v. Printed Media Servs., Inc., No. 94-2254, 1995 WL 135613 (D. Kan. Mar. 28, 1995) .........................................................6 Fifth Third Bank v. Canyon Crest Ins. Servs., Inc., No. 09-2440, 2010 WL 525774, at *1 (D. Kan. Feb. 10, 2010) ................................................6 FMC Corp. v. Summit Agro USA, LLC, No. 14-51, 2014 WL 3703629 (D. Del. July 21, 2014) ...........................................................15 Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc., No. 03-1431, 2007 WL 1655625 (N.D. Cal. June 6, 2007).....................................................18 Fuzzysharp Techs. Inc. v. 3DLabs Inc., Ltd., 447 Fed. App’x 182 (Fed. Cir. 2011).......................................................................................11 Gonzalez v. Pepsico, Inc., No. 06-2163, 2007 WL 1100204 (D. Kan. Apr. 11, 2007)........................................................6 Hall v. Witteman, No. 07-4128, 2008 WL 1743439 (D. Kan. Apr. 14, 2008)........................................................5 Harlow v. Fitzgerald, 457 U.S. 800 (1982)...................................................................................................................5 Holroyd v. Dep’t of Veterans Affairs, No. 06-4133, 2007 WL 1585846 (D. Kan. June 1, 2007)......................................................5, 9 Howse v. Atkinson, No. 04-2341, 2005 WL 994572 (D. Kan. Apr. 27, 2005)..........................................................6 IMAX Corp. v. In-Three, Inc., 385 F. Supp. 2d 1030 (C.D. Cal. 2005) ...................................................................................15 Kerr v. Dillard Store Servs., Inc., No. 07-2604, 2008 WL 687014 (D. Kan. Mar. 10, 2008) .........................................................8 Kickapoo Reservation in Kan. v. Nemaha Brown Watershed Joint Dist. No. 7, No. 06-2248, 2013 WL 3821201 (D. Kan. July 23, 2013) ......................................................10 Kutilek v. Gannon, 132 F.R.D. 296 (D. Kan. 1990)........................................................................................5, 6, 11 MacroSolve, Inc. v. Antenna Software, Inc., No. 11-287, 2013 WL 7760889 (E.D. Tex. Aug. 30, 2013) ....................................................17 Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 5 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page v Malibu Boats, LLC v. Nautique Boat Co., Inc., 122 F. Supp. 3d 722 (E.D. Tenn. 2015).............................................................................13, 14 Mayberry v. E.P.A., No. 06-2575, 2008 WL 104208 (D. Kan. Jan. 9, 2008).............................................................5 Monroe v. City of Lawrence, Kan., No. 13-2086, 2013 WL 6154592, at *1 (D. Kan. Nov. 21, 2013)...................................................................................................................6 Nippon Steel & Sumito Metal Corp. v. POSCO, No. 12-2429, 2013 WL 1867042 (D.N.J. May 2, 2013)..........................................................15 Norred v. Medtronic, Inc., No. 13-2061, 2014 WL 554685 (D. Kan. Feb. 12, 2014)..................................................13, 18 Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017).............................................................................................................16 Prestige Jewelry Int’l, Inc. v. BK Jewellery HK, No. 11-2930, 2012 WL 1066798 (S.D.N.Y. Mar. 24, 2012)...................................................17 Roadbuilders Mach. Supply Co. v. Sennebogen, Inc., No. 11-2681, 2012 WL 1253265 (D. Kan. Apr. 13, 2012)......................................................12 RR Donnelley & Sons Co. v. Xerox Corp., No. 12-6198, 2013 WL 6645472 (N.D. Ill. Dec. 16, 2013).........................................13, 14, 18 SCVNGR, Inc. v. eCharge Licensing, LLC, No. 13-12418, 2014 WL 4804738 (D. Mass. Sept. 25, 2014) ...........................................13, 14 Sebo v. E. Livestock Co., No. 95-1222, 1995 WL 827997 (D. Kan. Nov. 15, 1995) .........................................................8 Semsroth v. City of Wichita, No. 06-2376, 2007 WL 2287814 (D. Kan. Aug. 7, 2007) ...................................................8, 11 Shurtape Techs., LLC v. 3M Co., No. 11-17, 2013 WL 789984 (W.D.N.C. Mar. 4, 2013)....................................................15, 17 Tatcha, LLC v. Landmark Tech. LLC, No. 16-48-31, 2017 WL 951019 (N.D. Cal. 2017)..................................................................11 TouchTunes Music Corp. v. Rowe Int’l Corp., 676 F. Supp. 2d 169 (S.D.N.Y. 2009)......................................................................................19 Trover Grp., Inc. v. Dedicated Micros USA, No. 13-1047, 2015 WL 1069179 (E.D. Tex. Mar. 11, 2015) ..................................................14 Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 6 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page vi Wolf v. U.S., 157 F.R.D. 494 (D. Kan. 1994)........................................................................................6, 8, 12 Woltkamp v. Kan., No. 16-2790, 2017 WL 373381 (D. Kan. Jan. 26, 2017).......................................................6, 9 Zimmers v. Eaton Corp., No. 15-2398, 2016 WL 1322343 (S.D. Ohio Apr. 5, 2016) ......................................................9 Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 7 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page vii INDEX OF EXHIBITS PX 1, Letter of July 17, 2014 PX 2, GARMAG_04_00000001 PX 3, Smart Rubber Bands PX 4, Trademark Reg. No. 2,219,229 PX 5, Lowrance Marine Electronics website – New StructureMapTM with HDS® Gen2 PX 6, Defendants’ Petition for Inter Partes Review (excerpted) PX 7, Defendants’ Invalidity Contentions Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 8 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 1 I. INTRODUCTION Garmin’s TracBack Brand. In the mid-90s, two Garmin technologists devised of a new way to create simplified yet accurate routes to a previously visited point. Garmin immediately recognized the value of this technology and, over the course of the next several months, quickly incorporated its new “TracBack” feature throughout its suite of GPS navigation products. At the same time, Garmin also took care to protect its nascent brand, which included seeking Federal trademark protections on TracBack. Those rights were granted in January 1999, which afforded Garmin rights to market any TracBack “feature sold as a component of a global position system receiver and indicator for use in navigation.” In 2004, Garmin’s TracBack mark became “incontestable.”1 More than a decade after Garmin received Federally protected rights in TracBack, Navico launched TrackBack—a phonetically-identical feature it would sell as a component of its competing GPS products to allow the user to “scroll-back” through a “recorded history” to “find spots and set waypoints for easy returns to desired fishing locations.” D.I. 115-7 at 1. No matter what else happens with the Motion for Partial Judgment or in the IPR, Garmin will have its day in court to enjoin Navico’s continuing acts of trademark infringement, false designation, and unfair competition. For this reason alone, the Court should deny one competitor’s request to delay resolving the rights of another. Garmin’s TracBack Patent. In addition to trademark rights, Garmin also secured a patent protecting the technologies that powered its TracBack brand—namely, U.S. Patent No. 6,459,987.2 Not once, but twice, Garmin asked Navico to voluntarily stop its infringement of the 1 See 15 U.S.C. § 1065. 2 Navico’s products include a variety of features that infringe on the ‘987 Patent, including the same “TrackBack” feature that is subject to Garmin’s trademark infringement and related claims. See D.I. 99 at ¶¶ 55-72. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 9 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 2 ‘987 Patent. PX 1, PX 2. And not once, but twice, those requests were ignored. So this case followed on October 17, 2016. In the year that has followed, Navico has asserted a counterclaim that the ‘987 Patent is invalid, see D.I. 25 at p. 23, based on a variety of materials identified in formal contention discovery. Despite espousing the efficiencies of IPR throughout its motion to stay, Navico has opted to litigate its counterclaim of invalidity in district court—as the statutory deadline for it to seek an IPR review of the ‘987 Patent has passed.3 Navico made its choice to litigate its counterclaims of invalidity in district court. As such, it cannot now complain about actually having to do just that. But Defendants’ motion suffers from a more fundamental flaw. On one hand, Defendants ask for a stay because the Court has not yet “invested significant resources’ into this case” or otherwise “become familiar with the patents, relevant art, the products, [or] claim construction.” D.I. 114 at 4 (internal quotations omitted). Yet, on the other hand, Defendants’ stay would require that the Court do exactly that—become familiar with the patents, relevant art, and claim construction so it can rule on Defendants pending “motions for judgment on the pleadings on § 101....” D.I. 114 at 8. That is not a stay. That is piecemeal litigation—one that relieves Defendants of the burdens of litigation but not the Court (who is still expected to issue rulings on hotly-contested issues). For this additional reason, Defendants requested stay should be denied because it is anything but a stay for the Court. Garmin’s Auto Guidance Patent. Finally, this case also involves another homegrown Garmin first—namely, Garmin’s Auto Guidance technologies protected by U.S. Patent No. 7,268,703. These technologies were originally conceived in 2003, when the inventors recognized that existing marine navigation systems were inherently flawed because they only 3 See 35 U.S.C. § 315(b); see also D.I. 12 at 3. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 10 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 3 passively “sound[ed] alarms when one’s intended navigation will take them through a cartographic hazard.” PX 3 at 1. Recognizing the shortcomings of this approach, the inventors devised a more “proactive” and safer approach to marine route calculation—treat the potential path as a flexible “rubber band” that the marine system can bend and mold to build a marine route based on preselected conditions, such as the depth of the user’s boat. Id. 2-3. Shortly thereafter, these inventions were incorporated into Garmin’s marine products as Auto Guidance, which was met with widespread acclaim. For nearly a decade, Defendants recognized Garmin’s patent rights on these technologies by disabling their competing technology throughout the United States and United States waters. But that all changed in August 2016, when Defendants opted to activate their competing feature throughout the country—despite the fact that their feature was developed years after Garmin’s patent and years after the launch of Auto Guidance. While Defendants now seek a stay based on its new-found allegations of invalidity, those beliefs are belied by their years of contrary conduct. In any event, the pending IPR proceeding has absolutely no impact on the issues relevant to the majority of Garmin’s counts in its complaint. D.I. 99 (Counts III to VII). Thus, the IPR has no chance of simplifying majority of the issues in this case. II. QUESTIONS PRESENTED AND SUMMARY OF ARGUMENT A. Question 1—Have Defendants made a “clear showing” of some “compelling reason” warranting a stay while the Court decides the pending Motion for Partial Judgment where, as here, the underlying motion does not address Counts IV through VII (D.I 99), was filed before claim construction concluded, and discovery overlaps between the unchallenged counts of trademark counts (IV to VII) and the challenged patent counts (I to III)? The answer is no, because: Defendants’ Motion Will Not “Finally Conclude” This Case. Defendants’ Motion for Partial Judgment4 only challenges three of the seven counts asserted in the Complaint. In 4 See D.I. 106, 107. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 11 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 4 particular, that motion will have no impact on Garmin’s unchallenged allegations of trademark infringement, false designation, and unfair competition. Here, there is no scenario in which the motion for “partial judgment” will “finally conclude” this case. Defendants’ Motion Seeks A Stay and Thus Deprive Garmin and the Court of Uncompleted Claim Construction Discovery. As detailed in Garmin’s opposition to the motion for partial judgment, the Federal Circuit has held that “it will ordinarily be desirable―and often necessary―to resolve claim construction disputes prior to a § 101 analysis[.]”5 The parties included expert declarations with their claim construction briefs and have not conducted depositions of those experts. Granting Defendants’ request for a stay would deprive Garmin and the Court of this information that is so “often necessary” to resolve Defendants’ validity challenge. Defendants’ Motion Gives Only Bare Attorney Argument of Alleged Waste and Burden. Defendants provide no explanation—let alone evidence—on why continuing with the agreed discovery schedule will cause waste or impose undue burden. And because the products accused of infringing Garmin’s trademarks are also accused of infringing Garmin’s patents, any interim discovery will have significant value in this case no matter how the motion to dismiss is decided. B. Question 2—Have Defendants carried their burden to show that a stay pending IPR is appropriate where the potential for simplification of issues is slim to non-existent and where Garmin would suffer undue prejudice? The answer is no, because: The IPR Cannot Simplify Issues for Most of the Claims. The pending FLIR IPR is directed only to the ‘703 Patent. Thus, there is no potential for it to simply any issues related to the ‘987 Patent, or to Garmin’s trademark infringement, false designation, and unfair competition claims. Staying This Case Would Prejudice Garmin. Staying this case would provide no discernible benefit, while causing undue prejudice to Garmin. Not only would the non- patent claims that are unaffected by the IPR sit idle for no reason, there would also be substantial prejudice to Garmin Corporation, whose rights in the ‘987 Patent would languish in the interim, for no other reason than an unrelated patent is under review PTAB. III. A “STAY” WHILE THE COURT RULES ON THE PENDING MOTIONS IS NO STAY AT ALL—IT SIMPLY PUSHES DEFENDANTS’ BURDENS ON TO THE COURT AND PREJDUCES GARMIN’S LEGITIMATE INTERESTS Defendants’ most comprehensive bases for a “stay” is straightforward—stay their obligation to participate in this proceeding, but not the Court’s obligation to rule on the pending 5 See D.I. 116 at 28 (quotation omitted). Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 12 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 5 motions for partial judgment. D.I. 144 at 8-11 (“A stay is similarly warranted in this case as Defendants’ Rule 12(c) Motion, if granted, would ... narrow the issues remaining against Navico.”) (emphasis added). In other words, Defendants ask the Court to relieve them of the litigation process—but not the Court—despite the significant prejudice the stay will have on Garmin’s legitimate trademark rights and rights to fair competition. For the reasons set forth below, Garmin respectfully requests the Court deny Defendants’ asymmetric “stay.” A. Standard and Burden—In this District, Stays In View of Pending Motions Exceedingly Rare Unless Absolute/Qualified Immunity Is At Issue Even though the extraordinary decision to stay discovery rests within the sound discretion of the court, the Tenth Circuit recognizes that “the right to proceed in court should not be denied except under the most extreme circumstances.” Commodity Futures Trading Comm’n v. Chilcott Portfolio Mgmt., Inc., 713 F.2d 1477, 1484 (10th Cir. 1983). Thus the “general policy in this district is not to stay discovery” based solely on the filing of a potentially dispositive motion. Kutilek v. Gannon, 132 F.R.D. 296, 297 (D. Kan. 1990). And “the great weight of authority in this District is against granting a stay of discovery ... even when a dispositive motion is pending.” Cargill Meat Solutions Corp. v. Premium Beef Feeders, LLC, No. 13-1168, 2015 WL 3937395, at *2 (D. Kan. June 26, 2015) (emphasis added). Such partial stays are only warranted under a limited set of “extreme circumstances.” The first “major exception” to this District’s policy against staying proceedings is shown “when the party requesting the stay has filed a dispositive motion asserting absolute or qualified immunity.” Holroyd v. Dep’t of Veterans Affairs, No. 06-4133, 2007 WL 1585846, at *1 (D. Kan. June 1, 2007) (emphasis added) (citation omitted). Almost every case from this District cited by Defendants addressed readily Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 13 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 6 distinguishable cases involving immunity defenses.6 See Kutilek, 132 F.R.D. at 298 (absolute/qualified); Hall v. Witteman, No. 07-4128, 2008 WL 1743439, at *2 (D. Kan. Apr. 14, 2008) (same); Mayberry v. E.P.A., No. 06-2575, 2008 WL 104208, at *1 (D. Kan. Jan. 9, 2008) (sovereign); Woltkamp v. Kan., No. 16-2790, 2017 WL 373381, at *1 (D. Kan. Jan. 26, 2017) (same); Howse v. Atkinson, No. 04-2341, 2005 WL 994572, at *1 (D. Kan. Apr. 27, 2005) (qualified); Monroe v. City of Lawrence, Kan., No. 13-2086, 2013 WL 6154592, at *1 (D. Kan. Nov. 21, 2013) (same). As Defendants pending motion has nothing to do with immunity, this distinction is critical if not fatal. Gonzalez v. Pepsico, Inc., No. 06-2163, 2007 WL 1100204, at *1 (D. Kan. Apr. 11, 2007) (immunity cases inapposite where, as here, “the present case does not deal with issues of absolute or qualified immunity.”). B. Defendants Have Not Carried Their Burden to Show a “Compelling Reason” to Stay Discovery Pending Their Motion for Partial Judgment In non-immunity cases, such as this case, a stay pending a dispositive motion may be warranted “[1] where the case is likely to be finally concluded as a result of the ruling thereon; [2] where the facts sought through uncompleted discovery would not affect the resolution of the motion, or [3] where discovery on all issues of the broad complaint would be wasteful and burdensome.” Kutilek, 132 F.R.D. at 298; Wolf v. U.S., 157 F.R.D. 494, 494 (D. Kan. 1994). Critically, “the party seeking a stay has the burden to clearly show that discovery should be stayed” and courts will “not grant a stay of all discovery absent some compelling reason.” Evello Investments N.V. v. Printed Media Servs., Inc., No. 94-2254, 1995 WL 135613, at *3 (D. Kan. Mar. 28, 1995) (emphasis added) (quotation omitted). Thus, “the party seeking the stay must make out a clear case of hardship or inequity in being required to go forward[.]” Fifth 6 It is no surprise that courts stay discovery in immunity cases, as the Supreme Court has stated that until the “threshold immunity question is resolved, discovery should not be allowed.” Harlow v. Fitzgerald, 457 U.S. 800, 818 (1982). Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 14 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 7 Third Bank v. Canyon Crest Ins. Servs., Inc., No. 09-2440, 2010 WL 525774, at *1 (D. Kan. Feb. 10, 2010) (Murgia, J.) (emphasis added). Defendants claim that “all three of these factors weigh[] heavily in favor of a stay.” D.I. 114 at 8. Defendants are wrong and, at a minimum, have not discharged their burden to “clearly show” a “clear case of hardship or inequity” justify a departure from the long-standing policies in this District. 1. Finally Concluded—There is no scenario in which Defendants’ motion “finally concludes” this case in view of Garmin’s claims of trademark infringement, false designation, and unfair competition. Here, there are only three possible outcomes with respect to Defendants’ Motion for Partial Judgment: 1) the Court grants the motion as to all claims challenged by the motion; 2) the Court denies the motion without prejudice; or 3) the Court denies the motion with prejudice. No matter what permutation Defendants advance, only one thing is certain—there is zero chance Defendants’ motion will “finally conclude” the case.7 This factor weighs against a stay. a. If the motion is granted as to all patent claims, this case will still proceed on Garmin’s counts of trademark infringement, false designation, and unfair competition Garmin’s “TracBack®” was registered in January 1999, and covers Garmin’s “feature, sold as a component of, a global position system receiver and indicator for use in navigation” and became incontestable in January 2004. PX 4. A decade later, Navico began promoting its “TrackBack™ feature” that allows Navico users “to review recorded sonar history, mark waypoints and save the location of important areas ... all without losing valuable sonar readings because HDS® Gen2 keeps recording while you’re marking those favorite locations.” PX 5. Critically, Navico’s “TrackBack™ feature” is accused of both trademark and patent 7 The fact that the Court could grant Defendants’ motion as to the ‘703 Patent alone does not change the fact that this case would still continue, whether or not C-MAP is a defendant. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 15 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 8 infringement. Although probably apparent, Navico’s “TrackBack™ feature” is accused of infringing on Garmin’s registered “TracBack®” mark because of its confusingly similar consumer impression (e.g., identical sound and mid-mark stylized capital “B”). This same feature—which enables creation of point-reduced path histories for use during navigation—is also accused of infringing Garmin’s ‘987 Patent based on the likely way it creates the point- reduced path histories. Thus, even if the Court were to grant Defendants’ motion and dispose of all patent claims in this case, this case will continue, not conclude. In particular, the same discovery about the same products and feature will apply regardless of the Motion for Partial Judgment—e.g., discovery about the decision to release the infringing “TrackBack” feature, the market and demand for that feature, the value and popularity of the same, and so on. Where, as here, the same discovery applies even if the Rule 12 motion was to succeed, “there is no reason discovery should not proceed.” Wolf, 157 F.R.D. at 495 (denying the requested stay); Cargill, 2015 WL 3937395, at *2 (denying stay where, as here, the movant “concede[d] that its motion for partial summary judgment, if granted, would not completely resolve this case”). Because this case will continue regardless of how the motion for partial judgment, there is no chance that this case will “finally conclude” and this factor weighs against granting a stay. b. After the Court’s decision on the motion for partial judgment, it is much more “likely” that this case will continue, not “conclude.” There are only three scenarios with respect to Defendants motion for partial judgment. And in two of these scenarios—denying with prejudice or denying without prejudice—a stay is unwarranted because the pending motion will not “finally conclude” any aspect of this case (patent or non-patent). Sebo v. E. Livestock Co., No. 95-1222, 1995 WL 827997, at *1 (D. Kan. Nov. 15, 1995) (denying a stay because the movant did not prove “that the case is likely to be Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 16 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 9 finally concluded as a result of the ruling on the motion to dismiss”); Kerr v. Dillard Store Servs., Inc., No. 07-2604, 2008 WL 687014, at *1 (D. Kan. Mar. 10, 2008) (same); Semsroth v. City of Wichita, No. 06-2376, 2007 WL 2287814, at *1 (D. Kan. Aug. 7, 2007). Instead of showing how their Rule 12(c) motion will “likely ... finally conclude” the case, Defendants argue that a stay should be entered because the motion will “at least simplify” the issues in this case. D.I. 114 at 8 (quoting Zimmers v. Eaton Corp., No. 15-2398, 2016 WL 1322343, at *2 (S.D. Ohio Apr. 5, 2016)) (emphasis added).8 Simplification of the issues is not enough, however, and could trivially be argued for staying every case after one side files any dispositive motion. Rather, in this District (unlike Ohio), staying discovery for a pending dispositive motion requires a showing that the motion is likely to conclude the case. Holroyd, 2007 WL 1585846, at *1 (“To stay discovery, defendants must prove that they are likely to prevail on the dispositive motion.” (emphasis in original)). This requirement notwithstanding, Defendants suggest that this case should be stayed because their motion, “if granted, will dispose of all claims against CMAP and all of the patent claims against Navico.” D.I. 114 at 2. As explained by another court in this District, in seeking to stay discovery based on a speculative simplification-of-issues standard: [D]efendants misread the standard. The relevant inquiry is not ‘if’ the case could be resolved by the pending dispositive motion, but rather whether it ‘is likely to be finally concluded’ through a ruling on the dispositive motion. Anderson v. Bratton, No. 07-3017, 2008 WL 9758640, at *2 (D. Kan. July 28, 2008) (denying 8 Defendants also argue that “it is sufficient that the scope of the case would be narrowed.” D.I. 114 at 9-10 (citing Woltkamp, 2017 WL 373381, at *1). But the “narrow (or even conclude)” language of Woltkamp was in relation to discovery being wasteful and burdensome. Woltkamp, 2017 WL 373381, at *1. That is, a party seeking the stay is not relieved from showing that the potentially dispositive motion would finally conclude the case. Rather, in the context of a qualified immunity case, where “[t]he Supreme Court has made it clear that until the threshold question of immunity is resolved, discovery should not be allowed[,]” id. at *1, the potential for narrowing of the case could avoid wasteful and burdensome discovery. Here, as Garmin demonstrates, discovery would not be wasteful or burdensome. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 17 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 10 stay) (emphasis added). For these reasons, Defendants have failed to show any likelihood that this case is finally concluded as a result of the pending motion for partial judgment. 2. Uncompleted Claim Construction Discovery—The parties have started, but not completed, the claim construction process. Granting a stay at this juncture will deprive Garmin and the Court of this information critical to resolving Defendants’ invalidity challenge. While Defendants are correct that the Federal Circuit has occasionally sanctioned resolving patent eligibility disputes “without the need for any discovery[,]” see D.I. 114 at 10, that does not mean discovery is never warranted. As explained in Garmin’s opposition, if the Court is not inclined to deny the invalidity challenge now, with prejudice, then Garmin and the Court are entitled to discover and consider evidence with respect to the proper construction of the claimed inventions. D.I. 116 at 29 (“[A]ny issues surrounding alleged scope and preemption concerns may be properly dealt with on claim construction.”). Here, Garmin has identified several terms that impact the § 101 analysis whose constructions are disputed by the parties. See D.I. 116 at 29-30 (“marine route calculation algorithm,” “non-user selected waypoints,” and preambles containing the term “global positioning system receiver device”). In addition, the parties have submitted opening claim constructions briefs and supporting expert declarations. D.I. 94, 95, 95-4, 97. The parties have not completed their briefing, nor have depositions of the parties’ experts taken place.9 This discovery is thus uncompleted, and courts routinely require claim construction discovery in assessing a § 101 challenge.10 E.g., 9 Under the original schedule, the Markman briefing would have been completed by now. D.I. 42 at 10. But that process was tabled in view of the adjournment of the scheduled hearing in view of the Court’s other obligations. D.I. 104. Garmin submits that it is fundamentally unfair for Defendants to now use this relatively modest extension of time for tactical gain. 10 Because claim construction discovery is needed to address Defendants Motion for Partial Judgment, Defendants’ citations to Kickapoo Reservation in Kan. v. Nemaha Brown Watershed Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 18 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 11 Bancorp Servs. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (claim construction “will ordinarily be desirable—and often necessary—to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.”); Fuzzysharp Techs. Inc. v. 3DLabs Inc., Ltd., 447 Fed. App’x 182, 185 (Fed. Cir. 2011) (nonprecedential) (vacating judgment because “the patent eligibility of at least one of the asserted claims turns on questions of claim construction that the district court did not have the opportunity to address.”); Tatcha, LLC v. Landmark Tech. LLC, No. 16-48-31, 2017 WL 951019, *6 (N.D. Cal. 2017) (“I find that the determination of whether the ‘319 Patent is valid under Section 101 would benefit from claim construction and a fuller factual record.”); Eagle View Techs., Inc. v. Xactware Sols., Inc., No. 15-07025, 2016 WL 4154136, at *3 (D.N.J. 2016) (denying § 101 challenge that involved “a number of factual disputes and raised issues about the meanings of the claims”). Defendants’ motion to stay is designed to cutoff the “often necessary” process of legally construing the claims. To the extent their § 101 challenge is not denied outright, it should not be finally resolved until after the claims at-issue are legally construed. Because as-of-yet incomplete claim construction discovery could impact the Court’s resolution of the underlying motion, this factor weighs in favor of denying a stay. 3. Unsupported Allegations of Waste and Burden—Defendants did not even try to articulate any actual waste or burden in their Motion. And because the same Navico products and features are accused of both patent and trademark infringement, there is substantial overlap and little risk of waste or burden. On this factor, Defendants claim that “discovery at this stage would be wasteful and burdensome to the Court and the parties.” D.I. 114 at 11. Tellingly, however, Defendants fail to Joint Dist. No. 7, No. 06-2248, 2013 WL 3821201 (D. Kan. July 23, 2013) and Catron v. Colt Energy, Inc., No. 13-4073, 2014 WL 2828683 (D. Kan. June 23, 2014) are inapposite. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 19 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 12 explain or evidence how or why this bald assertion is true. This is fatal to Defendants’ motion. Kutilek, 132 F.R.D. at 300 (“defendants cannot rely on some generalized objections, but must show specifically how [discovery] is burdensome and/or overly broad by submitting affidavits or some detailed explanation as to the nature of the claimed burden”); Semsroth, 2007 WL 2287814, at *1 (“The Court sees no reason why the parties should not be moving forward with discovery regarding the individual claims. Indeed, to stay such discovery in these circumstances would serve no purpose other than to delay the case.”); Cargill, 2015 WL 3937395, at *1 (“A party seeking a stay of discovery has the burden to clearly show a compelling reason for the court to issue a stay.”). This is particularly true where, as here, much of the same discovery will apply even if the Motion for Partial Judgment were granted. First, the same products accused of infringing Garmin’s patents are also accused of infringing Garmin’s trademark. D.I. 99, ¶¶ 55-64 (patent infringement by “TrackBack”), 73-80 (trademark infringement by “TrackBack”). Thus, for example, discovery into Navico’s financials for these products will have application to all claims in this case, patent and non-patent. Second, and more important, Garmin also accused Navico’s “TrackBack” feature of infringing both Garmin’s “TracBack” mark and TracBack patent (i.e., the ‘987 Patent). D.I. 99, ¶¶ 55-64, 73-80. Because the exact same feature is accused of both patent and trademark infringement, discovery into Garmin’s unchallenged trademark counts will have significant overlap with its patent infringement allegations—for example, the market for the Navico products, the popularity of the infringing feature and mark, the value of the infringing feature and mark, and so on. Because the same discovery will occur regardless of the disposition of a dispositive motion, “there is no reason discovery should not proceed.” Wolf, 157 Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 20 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 13 F.R.D. at 495. For this additional reason, this factor weighs against staying discovery.11 Because Defendants have not articulated any actual waste or burden, and because discovery into Garmin’s unchallenged claims overlap with the challenged claims, this factor weighs in favor of the District’s policy against staying discovery. For these additional reasons, Defendants’ motion should be denied. IV. THE IPR REVIEW OF ONE PATENT DOES NOT SUPPORT STAYING AN ENTIRE CASE INVOLVING OTHER PATENT AND NON-PATENT ISSUES A. Standard and Burden—A Stay Pending IPR Is Inappropriate Where There Is Little Chance for Simplification of Issues and the Non-Movant Is Unduly Prejudiced Courts in this District have applied a three-factor test to determine whether a stay pending IPR is appropriate: 1) whether discovery has closed and whether there is a trial date); 2) whether a stay would simplify issues in the case; and 3) whether the non-movant would suffer undue prejudice or a clear tactical disadvantage from the stay. Norred v. Medtronic, Inc., No. 13-2061, 2014 WL 554685, at *1-*2 (D. Kan. Feb. 12, 2014). Courts routinely deny stays where, as here, not all asserted patents are subject to IPR. See, e.g., RR Donnelley & Sons Co. v. Xerox Corp., No. 12-6198, 2013 WL 6645472, at *3 (N.D. Ill. Dec. 16, 2013) (“Granting a stay as to the entire litigation would cause the four unchallenged VDP patents to languish unresolved for an unspecified amount of time, and up to two years if one or both of Xerox’s petitions is granted.”); Malibu Boats, LLC v. Nautique Boat Co., Inc., 122 F. Supp. 3d 722, 728 (E.D. Tenn. 2015) (denying renewed motion to stay case pending IPR 11 Nor does Roadbuilders compel a different conclusion. See Roadbuilders Mach. Supply Co. v. Sennebogen, Inc., No. 11-2681, 2012 WL 1253265, at *2 (D. Kan. Apr. 13, 2012). In that case, the defendant sought to compel arbitration of the entire action. Id. at *1. Therefore, there was no potential discovery that was unaffected by the motion to compel arbitration. And because the arbitrator would have the power to determine the scope of discovery, there was a “potential for wasted resources” if the arbitrator disallowed previously conducted discovery in the district court case. Id. at *2. The same concerns do not apply here. Garmin’s non-patent claims, and the discovery on them, will proceed regardless of the pending motion. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 21 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 14 review since the parties were direct competitors and not all patents asserted in the action were being reviewed by the PTAB); SCVNGR, Inc. v. eCharge Licensing, LLC, No. 13-12418, 2014 WL 4804738, at *10 (D. Mass. Sept. 25, 2014) (“Accordingly, the Court is not inclined to allow five of the eight patents-in-suit to ‘languish’ while the PTAB reviews only three of the patents- in-suit.”); Endotach LLC v. Cook Med. Inc., No. 13-1135, 2014 WL 852831, at *5 (S.D. Ind. Mar. 5, 2014) (only one of two asserted patents subject to IPR); Dane Techs., Inc. v. Gatekeeper Sys., Inc., No. 12-2730, 2013 WL 4483355, at *2 (D. Minn. Aug. 20, 2013) (“Even if the PTO decided to review the ‘836 Patent and the ‘979 Patent, Dane would still be left with its infringement claim for the ‘379 Patent languishing and unresolved.”). B. A Stay Pending IPR Is Inappropriate Here Defendants rely on the IPR of the ‘703 Patent filed by FLIR Systems, Inc. D.I. 114 at 1. Defendants themselves have only petitioned for review. Id. at 1 n.3.12 Courts routinely deny stays where an accused infringed has only petitioned for, but the PTAB has not instituted, IPR. E.g., Bonutti Research, Inc. v. Lantz Med., Inc., No. 14-609, 2015 WL 3386601, at *3 (S.D. Ind. May 26, 2015); Trover Grp., Inc. v. Dedicated Micros USA, No. 13-1047, 2015 WL 1069179, at *5-*6 (E.D. Tex. Mar. 11, 2015) (collecting cases). Nevertheless, even analyzing the issue on the basis of the third-party IPR filed by FLIR, a stay of this case is inappropriate. 1. Issue Simplification Is Non-Existent as to the ‘987 Patent and Garmin’s Trademark Infringement, False Designation, and Unfair Competition Claims Regardless of what happens in the FLIR IPR or Defendants’ petition, the parties will have to litigate the ‘987 Patent. This unrelated patent is not subject to IPR at all. Staying the case “would simply delay work that—regardless of [the IPR]—must still be done.” Bonutti 12 Navico’s petition for IPR identifies Defendants C-MAP USA, Inc. and C-MAP/Commercial, Ltd. as real-parties-in-interest. PX 6 at 1. Garmin therefore refers to the petition as Defendants’ petition, rather than solely Navico’s. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 22 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 15 Research, 2015 WL 3386601, at *5. Numerous courts have denied stays in such circumstances. E.g., RR Donnelley & Sons, 2013 WL 6645472, at *3; Malibu Boats, 122 F. Supp. 3d at 728; SCVNGR, 2014 WL 4804738, at *10; Endotach, 2014 WL 852831, at *5; Dane Techs, 2013 WL 4483355, at *2. In addition, Garmin asserts claims for trademark infringement, false designation, and unfair competition. D.I. 99 at ¶¶ 164-209 (Counts 4-7). Because IPR proceedings address only patent validity issues, these claims cannot be simplified. Where numerous non-patent issues will remain in the case despite proceedings before the PTO, courts find this factor weighs against a stay. E.g., ADA Sols., Inc. v. Engineered Plastics, Inc., 826 F. Supp. 2d 348, 351 (D. Mass. 2011) (“myriad federal and state” claims would remain at issue); IMAX Corp. v. In-Three, Inc., 385 F. Supp. 2d 1030, 1032 (C.D. Cal. 2005) (“[W]hen reexamination potentially will eliminate only one issue out of many, a stay is not warranted.”); Shurtape Techs., LLC v. 3M Co., No. 11- 17, 2013 WL 789984, at *3 (W.D.N.C. Mar. 4, 2013) (“Presuming the patent-related issues are, in fact, streamlined as a result of reexamination, Shurtape has five (5) other causes of action. . . . [A] stay imparts no advantage for the non-patent aspects of the case.” (emphasis in original)); Nippon Steel & Sumito Metal Corp. v. POSCO, No. 12-2429, 2013 WL 1867042, at *7 (D.N.J. May 2, 2013) (“If the claims are not dependent on the patent and would otherwise have an independent existence, there is no conservation of time and resources occasioned by reexamination because the claims will continue unaffected following whatever action the USPTO takes.”); see also FMC Corp. v. Summit Agro USA, LLC, No. 14-51, 2014 WL 3703629, at *3 (D. Del. July 21, 2014) (utilizing same test and declining to stay non-patent claims pending ITC action because legal issues and discovery for those claims would be different). 2. Simplification of Issues for the ‘703 Patent Is Doubtful The recent Aqua Products decision has dramatic consequences for the simplification of Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 23 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 16 issues factor. In that decision, the Federal Circuit found that the Patent Trial and Appeal Board had improperly placed the burden on the patentee of proving the patentability of amended claims. Aqua Prods., Inc. v. Matal, No. 2015-1177, 2017 WL 4399000, at *8-*9 (Fed. Cir. Oct. 4, 2017). To the extent the FLIR IPR and Defendants’ petition is successful, Aqua Products makes it far more likely that the IPR process will end with confirmed and/or allowed claims inevitably requiring litigation. Given this, even a final written decision finding the challenged claims of the ‘703 Patent unpatentable does not guarantee those claims will not re-enter the case, either in confirmed or clarified form. Whatever weight past cases gave to the potential for claims to be removed through IPR, that weight is questionable at best now. And Defendants make no real effort to show simplification of issues beyond the possibility that some claims from the ‘703 Patent may be removed from this case. Defendants only argue that, if the ‘703 Patent’s claims are found patentable or are amended, claim construction and damages “will likely be affected” and “the PTAB’s analysis will likely assist the Court” on claim construction and invalidity issues. D.I. 114 at 6. Even if these conclusory assertions are accepted, Defendants assert § 112 arguments in their invalidity contentions, PX 7 at 14-15, which are statutorily prevented from being considered by the PTAB and will be at issue in this case regardless. Bonutti Research, 2015 WL 3386601, at *4. Further, the Court owes no deference to the PTAB’s claim constructions regarding the ‘703 Patent, which is conducted under the different “broadest reasonable interpretation” standard. Id.13 In addition, the Supreme Court is currently considering a case that could moot the FLIR IPR and Defendants’ petition entirely. See Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017) (order granting certiorari). The question presented in that 13 Moreover, the IPR cannot simplify claim construction for the ‘987 Patent, which is unrelated to the ‘703 Patent. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 24 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 17 case is “[w]hether inter partes review-an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents-violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”14 The Supreme Court’s decision in that case will issue next summer, before the final written decision is due from the PTAB in the pending FLIR IPR. Should the Court strike down the IPR process as unconstitutional, there will be no simplification of issues. 3. Garmin Will Be Prejudiced by a Stay Pending IPR Defendants make little effort to show that a stay will not prejudice Garmin. See D.I. 114 at 6-7. Their argument regarding the ‘703 Patent rests primarily on the erroneous assumption that this case is in its early stages. See id. at 6. But that argument necessarily entails that a stay would simply work to push out the schedule in this case even further. Thus, it cannot be disputed that a stay would prejudice Garmin’s interest in the timely enforcement of its rights in the ‘703 Patent. See, e.g., MacroSolve, Inc. v. Antenna Software, Inc., No. 11-287, 2013 WL 7760889, at *1 (E.D. Tex. Aug. 30, 2013) (“Plaintiffs have an interest in the timely enforcement of their intellectual property rights.”); Prestige Jewelry Int’l, Inc. v. BK Jewellery HK, No. 11- 2930, 2012 WL 1066798, at *3 (S.D.N.Y. Mar. 24, 2012) (Patentees “need only show that prejudice would result from the issuance of a stay—which [patentees] have clearly done, since they are the putative patent holders, Prestige is the putative transgressor, and the stay will enable continued transgression.”). But regardless of the prejudice to Garmin regarding the ‘703 Patent, a stay of the entire case would work substantial prejudice to Garmin because its claims related to the ‘703 Patent are only a fraction of the causes of action at issue. The other claims, which cannot be impacted by the FLIR IPR or Defendants’ petition, would be left to languish while the PTAB considers only 14 https://www.supremecourt.gov/qp/16-00712qp.pdf. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 25 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 18 the ‘703 Patent. See Shurtape Techs., 2013 WL 789984, at *2 (“The Court must also consider [plaintiff’s] desire to prosecute its other causes of action as quickly as possible, particularly its allegations of trademark infringement.”). Further, Defendants fail to acknowledge the salient fact that the ‘703 and ‘987 Patents are owned by separate entities. D.I. 99 at ¶¶ 28-29. Garmin Corporation owns the ‘987 Patent, which is not subject to any IPR. Thus, staying the case for the IPR on the ‘703 Patent would cause Garmin Corporation’s rights in the ‘987 Patent to “languish,” despite there being no possibility that an IPR would affect the ‘987 Patent. RR Donnelley, 2013 WL 6645472, at *3. As Defendants note, the ‘987 Patent is set to expire in June 2018, D.I. 114 at 7, well before any final written decision for the IPR on the ‘703 Patent. Such circumstances prejudice Garmin Corporation. Endotach, 2014 WL 852831, at *4. In Endotach, the court faced a situation where the patent subject to IPR would likely expire before the IPR was completed. Id. Finding prejudice, the court stated that “[s]taying the case would necessarily put Endotach in an unfair position with respect to any possible settlement or royalty situation with respect to that patent.” Id. Here, the same type of prejudice is heightened with regard to the ‘987 Patent because it is not even subject to an IPR proceeding. Further, the prejudice to Garmin Corporation is not the type of “mere delay” normally present in cases considering stays pending IPR. Norred, 2014 WL 554685, at *4. For instance, the Norred case addressed a vastly different situation. There, only a single plaintiff asserted a single patent, with no other claims such as are at issue here. Id. at *1. Digital Ally is also distinguishable. There, unlike here, only patent claims were at issue, as the court had dismissed the antitrust and unfair competition claims. Digital Ally, Inc. v. Taser Int'l, Inc., No. 16-CV- 2032-CM-TJJ, 2017 WL 1048351, at *1 (D. Kan. Mar. 20, 2017). And there, unlike here, the Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 26 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 19 “Defendant [] provided a reasonable explanation for the timing of the filing of its inter partes review petitions nearly a year after this case was initiated.” Id. at *4. Most of the counts in this case—III to VII—are unaffected by the IPR proceeding. And Defendants have failed to provide any explanation—reasonable or otherwise—as to why they opted to wait nearly a year to seek an IPR proceeding. Rather, staying this case based on the IPR of the ‘703 Patent would allow Defendants to “unilaterally derail litigation” of the ‘987 Patent. CDX Diagnostics, Inc. v. U.S. Endoscopy Grp., Inc., No. 13-5669, 2014 WL 2854656, at *3 (S.D.N.Y. June 20, 2014) (quoting Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc., No. 03-1431, 2007 WL 1655625, at *3 (N.D. Cal. June 6, 2007)). That delay would not only prejudice Garmin Corporation’s rights in the ‘987 Patent, but would also provide Defendants the tactical advantage of running out the clock on one patent while another is litigated before the PTAB. See Endotach, 2014 WL 852831, at *4. And, as discussed, the Supreme Court’s decision in Oil States could moot the FLIR IPR and Defendants’ petition. Should the Court strike down the IPR process as unconstitutional, Garmin will have been prevented from prosecuting its rights for many months for no reason. 4. The Stage of the Case is Unimportant in View of the Other Factors Contrary to Defendants’ position, this case is not at an early stage. D.I. 114 at 4. Garmin filed its original complaint a year ago, D.I. 1, the parties have engaged in extensive written discovery, and have filed opening claim construction briefs. D.I. 94, 95. Where, as here, a case is “not in the late stages, but not in the early stages either[,]” this factor “slightly disfavors a stay.” Alstom Grid LLC v. Certified Measurement, LLC, No. 15-72, 2016 WL 2869748, at *2 (D. Del. May 16, 2016); see also Bonutti Research, 2015 WL 3386601, at *2 (factor did not favor a stay where claim constructions briefs were submitted, Markman hearing was scheduled, and parties had exchanged discovery). And the Court should discount the current dates of the Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 27 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 20 Markman hearing and the close of discovery (March 7 and May 9, 2018, respectively). The Markman hearing was moved from its prior December 12, 2017, date because the Court has a criminal trial at that time. In light of that schedule change, the parties jointly agreed to request an extension of the discovery deadline, as Defendants acknowledge. D.I. 114 at 4. Had the Markman hearing not been postponed—a change outside the parties’ control—claim construction briefing would be complete and discovery would be set to close in February. D.I. 101, 42. Nevertheless, even if this case was in its early stages, a stay is properly denied where, as here, there is limited potential for simplification of issues and the non-moving party will suffer undue prejudice. TouchTunes Music Corp. v. Rowe Int’l Corp., 676 F. Supp. 2d 169, 178 (S.D.N.Y. 2009); CDX Diagnostics, 2014 WL 2854656, at *4 (S.D.N.Y. June 20, 2014). Here, there is limited potential for simplification of issues, at least because the ‘987 Patent and Garmin’s trademark infringement, false designation, and unfair competition claims will be litigated regardless. And there is substantial prejudice because the majority of the claims in this case will languish for no reason because they cannot be impacted by the IPR on the ‘703 Patent. V. CONCLUSION The pending IPR has little to no potential to simplify the issues in this litigation, and Defendants’ Motion for Partial Judgment will not “finally conclude” this case. On the other hand, a stay would work substantial prejudice on Garmin. Garmin therefore respectfully requests that the Court deny Defendants’ motion. Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 28 of 29 Garmin’s Opposition To Defendants Renewed Motion To Stay (D.I. 113, 114) (Case No. 16-cv-2706) Page 21 DATED: October 20, 2017 Respectfully Submitted by: SHOOK, HARDY & BACON /s/ Aaron Hankel Aaron Hankel (D. Kan. No. 78458) ahankel@shb.com B. Trent Webb (KS No. 15965) bwebb@shb.com Beth Larigan (KS No. 20169) blarigan@shb.com Ryan Schletzbaum (pro hac vice) rschletzbaum@shb.com Lauren Douville (pro hac vice) ldouville@shb.com Colman McCarthy (pro hac vice) cdmccarthy@shb.com Shook, Hardy & Bacon L.L.P. 2555 Grand Boulevard Kansas City, Missouri 64108-2613 816-474-6550 Telephone 816-421-5547 Facsimile Attorneys for Plaintiffs CERTIFICATE OF SERVICE I hereby certify that on the 20th day of October 2017 that the foregoing document was filed using the Court’s ECF system, which automatically provided notice to all counsel of record who are deemed to have consented to electronic service. /s/ Aaron Hankel Attorney for Plaintiffs Case 2:16-cv-02706-CM-GLR Document 119 Filed 10/20/17 Page 29 of 29
