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LoganTree LP v. Garmin International, Inc.

United States District Court, D. Kansas

February 13, 2019

LOGANTREE LP, Plaintiff,
v.
GARMIN INTERNATIONAL, INC. and GARMIN USA, INC., Defendants.

          MEMORANDUM AND ORDER

          ERIC F. MELGREN UNITED STATES DISTRICT JUDGE

         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 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. Analysis A. 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, 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 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 ...


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