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Rothschild Connected Devices Innovations, LLC v. Garmin International, Inc.

United States District Court, E.D. Texas, Marshall Division

December 1, 2017

ROTHSCHILD CONNECTED DEVICES INNOVATIONS, LLC, Plaintiff,
v.
GARMIN INTERNATIONAL, INC., Defendant.

          MEMORANDUM OPINION

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE

         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.

         I. BACKGROUND

         This lawsuit started in February 2017, when Rothschild filed a complaint for infringement 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 therefore.

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.

         Johnson responded:

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 101 motion.

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 ...


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