PTAB's First Inter Partes Review Holds Cuozzo's Patent Claims Unpatentable as Obvious Over Prior Art | Practical Law

PTAB's First Inter Partes Review Holds Cuozzo's Patent Claims Unpatentable as Obvious Over Prior Art | Practical Law

In Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, the US Patent Trial and Appeal Board (PTAB) held that Cuozzo's patent claims were unpatentable under 35 U.S.C. § 103 based on two combinations of five prior art references and denied Cuozzo's motion to amend the claims, in the PTAB's first inter partes review under the America Invents Act.

PTAB's First Inter Partes Review Holds Cuozzo's Patent Claims Unpatentable as Obvious Over Prior Art

by Practical Law Intellectual Property & Technology
Published on 15 Nov 2013 • USA (National/Federal)
In Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, the US Patent Trial and Appeal Board (PTAB) held that Cuozzo's patent claims were unpatentable under 35 U.S.C. § 103 based on two combinations of five prior art references and denied Cuozzo's motion to amend the claims, in the PTAB's first inter partes review under the America Invents Act.
In its November 13, 2013 opinion in Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, the US Patent Trial and Appeal Board (PTAB) held that Cuozzo's claims relating to a speed limit indicator and method for displaying speed and the relevant speed limit for use in vehicles were unpatentable as obvious over the prior art. The PTAB's decision, which is the first inter partes review under the America Invents Act (AIA), invalidated all three reviewed claims as obvious over two combinations of five different prior art references.

Background

On June 15, 2012, Cuozzo Speed Technologies LLC (Cuozzo) sued Garmin for infringement of its US Patent No. 6,778,074 (the '074 patent) in the US District Court for the District of New Jersey. On September 16, 2012, Garmin filed a petition for inter partes review of claims 1-20 of the '074 patent, under 35 U.S.C. § 311, the first day these procedures were available. The district court did not stay the litigation between the parties, but it did delay claim construction proceedings to allow the PTAB to issue its decision first. On January 9, 2013, the PTAB instituted review of claims 10, 14 and 17, but denied Garmin's request to review the other claims of the '074 patent. The PTAB held an oral hearing on the three claims subject to review on August 16, 2013.
The '074 patent relates to a speed limit indicator and method for displaying speed and the relevant speed limit for use in vehicles. According to the specification of the '074 patent, the vehicle uses GPS data to track the vehicle's location and the speed limit in that location. The speed limit information is sent to the vehicle's speedometer, where a colored display indicates to the driver whether the current speed is within the legal limit. In one particular embodiment, the colored display is a disc that rotates to display speeds above the limit in red and speeds within the limit in white. The '074 patent also mentions that the colored display could be in the form of a liquid crystal display (LCD). Independent claim 10 requires, among other things, that the speedometer be "integrally attached" to the colored display. Claim 14 depends from claim 10, and claim 17 depends from claim 10.
The PTAB reviewed the patentability of claims 10, 14 and 17 of the '074 patent based on five prior art references (Aumayer, Awada, Tegethoff, Evans and Wendt).

Outcome

In its first decision in an inter partes review under the AIA, the PTAB held that claims 10, 14 and 17 were unpatentable as obvious in light of the prior art. In reaching its obviousness decision, the PTAB:
  • Construed the term "integrally attached" using the USPTO's broadest reasonable interpretation standard.
  • Held that Cuozzo did not establish priority of invention over prior art references Aumayer and Awada because Cuozzo failed to present corroborating evidence of conception and failed to show reasonable diligence toward reduction to practice.
  • Held claims 10, 14 and 17 unpatentable as obvious over prior art references Aumayer, Evans and Wendt.
  • Held claims 10, 14 and 17 unpatentable as obvious over prior art references Tegethoff, Awada, Evans and Wendt.
The PTAB also denied Cuozzo's motion to amend the claims because the proposed amendment impermissibly enlarged the scope of the claims.

Claim Construction of "Integrally Attached" Using Broadest Reasonable Construction

The PTAB began its analysis by construing the term "integrally attached" to mean "discrete parts physically joined together as a unit without each part losing its own separate identity" using the broadest reasonable construction standard. In construing the term, the PTAB:
  • Relied on the plain and common usage of the term and found the central characteristic of the term to be "attached."
  • Rejected Cuozzo's proposed construction as reading out the "attached" portion of the term because it allowed the display to be integrated in a way that the components no longer had separate identities.
  • Emphasized that the term "integrally attached" was added during prosecution in an amendment, and that Cuozzo relied on separate and distinct components in the specification as providing written description support for the new term.
  • Determined that Cuozzo's expert's testimony supported the PTAB's construction.
  • Rejected Cuozzo's reliance on a district court's earlier construction of the term "integrally connecting" because the terms were different and because district courts do not apply the same broadest reasonable construction standard.
  • Rejected Cuozzo's claim differentiation argument and found that the correct application of the doctrine supported the PTAB's construction.

Priority of Invention Analysis

The PTAB held that both Aumayer and Awada qualified as prior art under 35 U.S.C. § 102(e)(2) because their effective filing dates were both earlier than the effective filing date of the '074 patent.
The PTAB determined that the earliest conception date of the '074 patent was December 8, 2000. The PTAB rejected Cuozzo's earlier conception dates because:
  • Cuozzo did not present any corroborating evidence to support the inventor's declaration, which stated that Cuozzo conceived of the invention when he was pulled over by a police officer for speeding on November 28, 1999.
  • Cuozzo did not offer any testimony to authenticate a witness signature appearing on an October 30, 2000 invention disclosure document, and the PTAB held that there was no corroboration without the authenticating testimony.
The PTAB also determined that Cuozzo did not establish reasonable diligence toward reduction to practice of the invention because there were two extended periods of unexplained inactivity. The PTAB rejected Cuozzo's explanations for both of the gaps in diligence because:
  • Cuozzo did not provide any facts showing why it took Cuozzo two months to review and prepare comments on a preliminary search report that identified potential prior art.
  • Cuozzo did not provide enough specific dates or facts to account for a five month period where Cuozzo tried to obtain the money required to start the patent application process.

Obviousness Analysis

The PTAB rejected claims 10, 14 and 17 as unpatentable on the following two grounds:
  • Obviousness over prior art references Aumayer, Evans and Wendt.
  • Obviousness over prior art references Tegethoff, Awada, Evans and Wendt.
The PTAB rejected Cuozzo's teaching away arguments and emphasized that there is no requirement that every goal or objective of a prior art reference be preserved when relying on its teachings for an obviousness analysis.
The PTAB also rejected Cuozzo's attempts to distinguish the teachings of the individual prior art references, and emphasized that non-obviousness cannot be shown by attacking an individual reference when the obviousness determination is based on a combination of references.

Cuozzo's Motion to Amend the Claims

After finding claims 10, 14 and 17 unpatentable as obvious over the prior art, the PTAB also denied Cuozzo's motion to amend the claims. The PTAB rejected Cuozzo's proposed amendments because:
  • The proposed amendments would have broadened the scope of the original claims, in violation of 35 U.S.C. § 316(d)(3).
  • Cuozzo failed to show that there was sufficient written description in the original patent disclosure to support the amended claims, as required by 35 U.S.C. § 112.

Practical Implications

As the first final PTAB decision in an inter partes review under the AIA, Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC is the first look at the impact that inter partes review procedures may have on patent litigants. While the PTAB did not institute review on all of the claims that Garmin requested, the PTAB did side with Garmin on the three claims that it reviewed. In the Garmin decision:
  • The petitioner succeeded in invalidating three claims of a patent that it was accused of infringing in the parallel district court litigation, which may lead to additional streamlining of the district court litigation.
  • The PTAB rejected the claims on obviousness grounds using multiple references, suggesting that patent challengers may be able to successfully present complex invalidity arguments in inter partes review proceedings.
  • The PTAB construed the "integrally attached" term using the broadest reasonable construction standard, which may impact the construction of and lead to similar constructions for other disputed terms in the district court litigation.
  • The PTAB conducted a detailed priority analysis, which may have additional impact on the arguments available for the parties in the district court litigation if there are any other priority disputes.
  • The PTAB rejected the patentee's attempts to fix the problems with the claims through amendment, and instead cancelled all three of the reviewed claims.
The first decision from the PTAB suggests that inter partes review may be a powerful tool for patent challengers in the future. For more information on the procedures for inter partes review, see Practice Note, PTAB Trial Practice Rules: Inter Partes Review Procedures.

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