Garmin International Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001 (Patent Tr. & App. Bd. 2013)
In its first inter partes review (IPR) decision, the Patent Trial and Appeals Board (PTAB) indicated that it is willing to find obviousness based on a combination of as many as four prior art references, something a jury or district court judge might be hesitant to do.
The PTAB held in its decision that claims 10, 14, and 17 of Cuozzo's U.S. Patent No. 6,778,074 ("the 074 patent") were unpatentable under 35 U.S.C. § 103 under two separate obviousness analyses. The claims in the '074 patent were drawn "to a speed limit indicator and method for displaying speed" of a vehicle and the relevant speed limit at a current location of the vehicle. Garmin Int'l Inc. v. Cuozzo Speed Tech. LLC, IPR2012-000001 (Patent Tr. & App. Bd. 2013), 3.
The PTAB found claims 10, 14, and 17 obvious over two different multi-reference combinations, a three-reference combination and a four-reference combination, something a jury may be reluctant to do. That being said, the references the PTAB relied on for its analysis were not directed to complex technology, essentially dealing with the concept of attaching a colored display to a GPS speedometer. While the claims recited a GPS unit, there were no limitations directed to the inner workings of the GPS unit. Time will tell whether the Board is more willing to consider multi-reference combinations when considering more complex technologies.
In addition to finding the claims obvious over two multi-reference grounds the PTAB also provided a detailed analysis of the highly contested claim construction of the limitation "integrally attached" as recited in independent claim 10 of the '074 patent. Id. at 12. The decision included five pages of analysis of this short phrase, which shows the extreme level of detail and consideration that petitioners and patent owners can expect from the Board.
The Patent Owner Cuozzo argued that its specification sufficiently discloses a device where the speed of the vehicle and the speed limit at the current location of the vehicle are both displayed on a same LED device and that the claims should be interpreted in this way. The Board disagreed with Cuozzo, finding that the broadest reasonable interpretation of the claim meant that the colored display and the speedometer were "joined together as a unit without each part losing its own separate identity." Id at 8-9. This claim construction meant that Cuozzo's claim, even if held patentable, would not cover a device where the speed limit and current speed of the vehicle are displayed together on the same LCD screen. Id. at 15-16. In construing the claims, the Board specifically noted the differences in the rules governing claim construction by district courts and the PTAB in an inter partes review, signaling that the Board will strictly adhere to the current "broadest reasonable interpretation" (BRI) of claims. Id. at 17. In its Motion to Amend Claims, Cuozzo attempted a "back door" approach to address the claim construction issue. Cuozzo proposed modifying the claims in such a way that the Board's construction of "integrally attached" would be illogical. However, the Board found that the proposed amendments both impermissibly broadened the claims and had no written description support in the original specification. Id at 48-49.
Cuozzo also attempted to antedate two of the asserted references by showing conception and diligence to reduction to practice. With respect the earlier-filed prior art reference, the Board found that the evidence did not support earlier conception. The inventor Giuseppe Cuozzo had stated in his declaration that he conceived of the invention after he was pulled over in his car and received a speeding ticket. However, there was no corroborating evidence to support his declaration. The Board found that there was no corroborating evidence for a written disclosure by the inventor entitled the "Invention Submission Corporation." Id. at 21. With respect to a later-filed prior art reference, the Board found that the Cuozzo failed to show due diligence from before the prior art's filing date until the filing date of his patent application There were two separate unexplained time gaps in Cuozzo's period of alleged diligence, a two month period of time and a five month period of time. The Board's analysis is consistent with that from previous contested cases, i.e., interference proceedings. Id at 25-27.
In the PTAB's first IPR ruling, the Board has shown it will continue to reject uncorroborated evidence of earlier invention and that it will not be afraid to use multiple references in invalidating a claim, factors that favor the use of IPRs as a forum for invalidation.