United States District Court, E.D. Texas, Marshall Division
PAYNE UNITED STATES MAGISTRATE JUDGE
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
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).
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.
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.
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
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
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 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 ...