A Road Test of the New PTAB and a Road Map for Future IPR’s - Garmin Int’l, Inc., v. Cuozzo Speed Techs. LLC

by McDermott Will & Emery
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In the final decision of the first inter partes review (IPR) (under the America Invents Act), in a proceeding that included a rejection of the patent owner’s attempt to antedate prior art using, as evidence, an inventor’s speeding ticket, the Patent Trial and Appeals Board (PTAB) sided with the petitioner, finding the subject claims to be unpatentable and canceling all claims under review. Garmin Int’l, Inc., v. Cuozzo Speed Techs. LLC, Case IPR2012-00001 (PTAB, Nov. 13, 2013) (Lee, APJ).

Petitioner Garmin filed for IPR of a patent that Cuozzo had previously asserted against Garmin in a district court action. The patent was directed to a speed limit indicator and method for displaying speed and the relevant speed limit for use in connection with vehicles. The invention allegedly eliminates the need for a driver to take his or her eyes off the road to look for speed limit signs and resolves any confusion as to what the legal speed limit is in a particular area.

The Board’s claim construction analysis hinged on the meaning of “integrally attached.” Garmin alleged that the claims “must be consistent with the allegations set forth in the Patent Owner’s civil complaint,” while Cuozzo argued that the term meant “joined or combined to work as a complete unit.” The Board disagreed with both parties, construing the term as “discrete parts physically joined together as a unit without each part losing its own separate identity.”

The key to the Board’s analysis was that “integrally” modifies “attached” but such modification cannot negate or nullify the meaning of “attached.” Cuozzo’s construction actually read out the “attached” portion of “integrally attached,” effectively converting the claim feature to an “integral display.” The Board reasoned it would be illogical to regard something as being “attached” to itself.

The Board recognized that the term “integrally attached” was not found in the specification or the original application claims. Rather, the term was added by amendment to distinguish the claimed invention from a prior art reference. Cuozzo argued that the specification provided support for “integrally attached,” stating that the “[s]pedometer has . . . a colored display.” According to the Board, the noted language referred to the speedometer including a colored display, not the speedometer being “integrally attached” to the display. The Board elucidated: “[s]peedometer 12 is a speedometer with or without red plastic filter 18. It is a speedometer 12 without the red plastic filter 18 that is ‘integrally attached’ to the colored display that is red plastic filter 18.”

The Board observed that its claim construction was consistent with the applicant’s remarks supplied to distinguish the claimed invention from prior art, whereas Cuozzo’s construction nullified a limitation in the base claim. The Board also rejected the argument that the doctrine of claim differentiation supported Cuozzo’s claim construction. The Board explained that the failure of a dependent claim to recite a particular limitation cannot support a construction that nullifies a limitation already present in the base claim. The Board also found that the testimony of Cuozzo’s expert was vague and conflicting with respect to the key term. The Board additionally found that prior district court constructions Cuozzo cited were unpersuasive since none had actually construed the exact term at issue for the IPR.

Practice Note: The Petitioner prevailed on all grounds of review instituted for the IPR, and the Board hinted that the number of grounds could have been greater if obviousness was alleged instead of anticipation for certain claims. When instituting the proceeding, the Board sua sponte expanded the granted ground of review of a dependent claim (under Sec. 103) to include the base claim and intermediary claim, the rationale being “because dependent claims include all of the features of the claims on which they depend,” the obviousness ground perforce applied to the base and intermediary claims.

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