Although the first written decision by the Patent Trial and Appeals Board (PTAB) cancelled claims 10, 14, and 17 of US Patent No. 6,778,074 (the ’074 patent) and denied Patent Owner’s (Cuozzo’s) Motion to Amend Claims in its first written decision, the first inter partes review (IPR) was not a total loss for the patent owner. This is because several claims of the ’074 patent survived the first IPR, captioned Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC (IPR2012-00001). Thus, the claims that survived the IPR will remain in the underlying patent infringement lawsuit in the District Court of New Jersey involving the same parties.
On September 16, 2012, Garmin requested inter partes review of claims 1-20 of the ’074 patent and asserted ten grounds of unpatentability. In the January 9, 2013 decision to initiate trial for inter partes review, the PTAB granted the petition as to two grounds of obviousness directed to claims 10, 14, and 17, and denied the petition on the other claims and as to the other eight grounds of unpatentability. A little more than ten months from initiating the IPR trial, the PTAB issued its final written decision on November 13, 2013.
In the final written decision, the PTAB provided an in-depth analysis to support their construction of the claim phrase “integrally attached.” Interestingly, the PTAB’s construction of “integrally attached” in the final decision was the same as their construction of the phrase in the decision to initiate trial. Whether this will become a trend in other IPRs remains to be seen. Based on the PTAB’s construction of “integrally attached,” the PTAB found claims 10, 14, and 17 to be obvious over the same two grounds of obviousness that were granted in the decision to initiate trial. Cancelling claims based on the same grounds granted in the PTAB’s initial decision appears to be a good sign for the success of petitioners, since the PTAB grants petitions for IPR at a very high rate.
Another good sign for petitioners is that the two grounds for obviousness combined three and four references, respectively. Convincing a judge or jury to find a patent claim obvious by combining several references is generally a difficult task, however, the PTAB did not hesitate to combine multiple references. The PTAB stated that “[a] basis to combine teachings need not be stated expressly in any prior art reference,” and that “[t]here need only be an articulated reasoning with rational underpinnings to support a motivation to combine teachings,” citing In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006).
In addition to cancelling claims 10, 14, and 17 of the ’074, the PTAB denied Cuozzo’s Motion to Amend Claims in the final written decision. In the Motion to Amend Claims, Cuozzo added language to the original claims, without removing any limitations of the original claims. Even so, the PTAB found that Cuozzo enlarged the scope of the claims because the substitute claims redefined the meaning of “integrally attached,” making it possible that a structure not covered by the original claims could be covered by the substitute claims. The PTAB also found that Cuozzo failed to show that the substitute claims satisfied the written description requirement of 35 U.S.C. § 112, first paragraph. Therefore, because a claim amendment in an IPR may not enlarge the scope of the claims of the patent or introduce new matter pursuant to 35 U.S.C. § 316(d)(3), the PTAB denied Cuozzo’s Motion to Amend Claims.
Even though the PTAB canceled three claims of the ’074 patent and denied the Cuozzo’s Motion to Amend Claims, Garmin was unsuccessful in having the PTAB cancel all of the patent claims at issue in the underlying district court patent infringement litigation. Thus, all was not lost for Cuozzo because it is still possible the district court will find that Garmin infringed the ’074 patent. In order to escape an IPR with at least one patent claim remaining in a related patent infringement litigation, patent owners may consider asserting as many patent claims as possible in a complaint for patent infringement. Increasing the number of patent claims will make it more difficult for the accused infringer to prepare and file a petition for IPR, and depending on the scope of each asserted patent claim, the chances of at least one patent claim surviving the IPR may increase.