United States District Court, D. Nevada
For Silver State Intellectual Technologies, Inc., Plaintiff, Counter Defendant: Brenton R. Babcock, LEAD ATTORNEY, Knobbe Martens Olson & Bear LLP, Irvine, CA; Frederick S. Berretta, Loni Schutte, LEAD ATTORNEYS, PRO HAC VICE, Knobbe, Martens, Olson & Bear LLP, San Diego, CA; Jeffrey A Silvestri, LEAD ATTORNEY, McDonald Carano Wilson, Las Vegas, NV; Marko R. Zoretic, LEAD ATTORNEY, PRO HAC VICE, Knobbe, Martens, Olson & Bear LLP, Irvine, CA; Ioanna S. Bouris, PRO HAC VICE, Knobbe, Martens, Olson & Bear LLP, Los Angeles, CA.
For Garmin International, Inc., Garmin USA, Inc., Defendants, Counter Claimants: Paul R. Hart, LEAD ATTORNEY, Overland Park, KS; Abran J. Kean, Adam P. Seitz, Shook, Hardy & Bacon L.L.P., Kansas City, MO; Christopher R Miltenberger, Pisanelli Bice, PLLC, Las Vegas, NV; Jennifer L Braster, Naylor & Braster Attorneys at Law, PLLC, Las Vegas, NV.
ORDER on Plaintiff's Motion to Enforce Representative Product Agreement (Doc. #98)
PHILIP M. PRO, United States District Judge.
Presently before the Court for consideration is Plaintiff Silver State Technology, Inc.'s Motion to Enforce Representative Product Agreement (Doc. #98), filed on November 20, 2013. Defendants Garmin International, Inc. and Garmin USA, Inc. (collectively, " Garmin" ) filed an Opposition (Doc. #100) on December 9, 2013. Silver State filed a Reply (Doc. #101) on December 19, 2013. For the reasons set forth below, the Court finds no enforceable representative product agreement exists, and that Plaintiff's Motion must therefore be denied.
Plaintiff Silver State Intellectual Technologies, Inc. (" Silver State" ) owns the legal rights to several patents that generally cover various navigation processes and devices. After several stipulations, the four Silver State patents that remain at issue in this case are United States Patent Nos. 7,702,455 (the '455 Patent), 7,522,992 (the '992 Patent), 7,593,812 (the '3812 Patent), 7,739,039 (the '039 Patent) (collectively, " the Patents at issue" ). (See Order Granting Stip. (Doc. #49); Order Granting Stip. (Doc. #58); Order Granting Stip. (Doc. #92); Order Granting Stip. (Doc. #96).)
On January 11, 2013, Garmin provided Silver State with a draft proposal for product stipulations. (Pl.'s Mot. to Enforce Rep. Product Agreement [" Mot. to Enforce" ], Ex. 1.) The proposal included the " nuvi 3490LMT" for the '455 Patent, the '992 Patent, and the '3812 Patent. (Id. at 4, 7-9.) On February 7, 2013, after an exchange of emails, Garmin and Silver State added the nuvi 3490LMT to the draft representative product agreement for the '039 Patent. (Mot. to Enforce, Exs. 3-4.)
On April 5, 2013, at a hearing before the Court, counsel for Silver State informed the Court that the parties were " working on, and I think pretty much close to being done, on some sort of agreement about having representative products to be used at trial . . . ." (Mot. to Enforce, Ex. 5 at 97:23-25.) Counsel for Garmin did not comment on the prospect of a representative product agreement. One week later, on April 11, Silver State served Garmin with its Third Amended Initial Disclosures, which stated that " [t]he parties have agreed to use representative products for each asserted patent to represent the many accused product models. . . . Exhibits H through N identify the products being represented by each 'representative product' and the infringing features in more detail." (Mot. to Enforce, Ex. 6 at 1.) Silver State then provided a table that listed the nuvi 3490LMT as the representative product for the Patents at issue. (Id. at 2.) On April 12, 2013, counsel for Garmin sent Silver State a revised draft representative product agreement, which listed the nuvi 3490LMT as representatives
for the Patents at issue, and requested confirmation from Silver State that the draft was satisfactory. (Mot. to Enforce, Ex. 7.) Neither party presents evidence of Silver State's response to Garmin's April 12 draft.
On August 23, 2013, counsel for Garmin wrote to Silver State and explained that " there are a few outstanding issues that have prevented (and continue to prevent) us from finalizing the [representative product agreement]." (Mot. to Enforce, Ex. 9.) Garmin then provided a list of the remaining issues that, once clarified, would get the parties " positioned to finalize the product stipulation and its terms." (Id.) Over the next two months, the parties continued to revise and edit the draft representative product agreement. (See Mot. to Enforce, Exs. 10-17.)
Fact discovery in this case closed on October 18, 2013. (Order (Doc. #86).) On November 4, 2013, counsel for Garmin wrote to counsel for Silver State and explained that Garmin would not yet sign the representative product agreement because Garmin had concerns regarding " the scope of the stipulation and what/how it will apply in this case." (Mot. to Enforce, Ex. 19.) Counsel for Garmin indicated that further discussion may have to wait until Garmin reviewed Silver State's expert report and final infringement allegations. (Id.) Silver State responded on November 6 with a revised product agreement, " with limiting language regarding Silver State's infringement theories with respect to the Representative Product." (Mot. to Enforce, Ex. 20.)
The parties met via telephone on November 11, 2013, during which Garmin raised concerns regarding whether the representative product was sold with a traffic antenna. (Decl. of Paul R. Hart Supp. Defs.' Resp. to Mot. to Enforce (Doc. #100) at ¶ 7-8.) Silver State responded that whether the product is sold with a traffic antenna is unimportant, as Silver State alleges infringement by products with the ...