Garmin Prevails in First Inter Partes Patent Review

Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC By James Grace – Edited by Kathleen McGuinness Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs. LLC, IPR2012-00001 (P.T.A.B. 2013) Slip Opinion hosted by PatentlyO [caption id="attachment_3916" align="alignleft" width="150"] Photo By: Kenny Louie - CC BY 2.0[/caption] The Patent Trial and Appeal Board (“PTAB”), in its first inter partes review under 35 U.S.C. 311, held in favor of the petitioner, a GPS technology developer, Garmin. Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs. LLC, IPR2012-00001 (P.T.A.B. 2013) at 49 (“Decision”). PTAB cancelled three claims of Cuozzo Speed Technologies LLC’s (“Cuozzo’s”) U.S. Patent No. 6,778,074 (“the ’074 patent”), “Speed limit indicator and method for displaying speed and the relevant speed limit,” finding them invalid on grounds of obviousness under 35 U.S.C. 103. Id. PTAB also denied Cuozzo’s Motion to Amend the ’074 patent to substitute the three impugned claims. Id. PatentlyO provides an overview of the case and speculates how PTAB’s decision may threaten Cuozzo’s ongoing infringement action against Garmin and Chrysler in the District Court of New Jersey. Complaint, Cuozzo Speed Techs. LLC v. Garmin Int’l, Inc. et al., No. 2:12-cv-03623 (D.N.J. June 15, 2012). As previously reported in the Digest, the Leahy-Smith America Invents Act of 2011, Pub. L. No. 112-29, 125 Stat 284 (2011), created the inter partes review system under 35 U.S.C. 311. Effective September 16, 2012, any person can file for inter partes review and request to cancel claims on the grounds of 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness). However, the relevant prior art in such proceedings is limited to patents and printed publications. Three months after Cuozzo commenced its infringement action, Garmin sought an inter partes review to cancel all twenty claims of the ’074 patent. Decision at 2. PTAB denied the petition with respect to seventeen of the claims and commenced a trial to consider the validity of claims 10, 14 and 17. Id. at 2. Each of the three claims was limited by the requirement that a speedometer be “integrally attached” to a color display. Id. at 7. The proper construction of “integrally attached” was the key issue before PTAB. Cuozzo argued that that the term required the speedometer and the speeding indicator to be part of a single component. Id. at 10. Siding with Garmin, PTAB construed the claim to require the speedometer and the speeding indicator to be separate components. Id. at 9. Based on this claim construction, PTAB found the three claims obvious over combinations of three and four prior art references. Id. at 38, 43. Cuozzo sought unsuccessfully to disqualify two patents as prior art by claiming an invention date predating the filing date of the references pursuant to 35 U.S.C. 102(e)(2). Id. at 20.  In order to exclude the prior art references, Cuozzo was required to establish that it was the “first to conceive the invention and that it exercised reasonable diligence in later reducing the invention to practice.” Id. at 20. PTAB found that Cuozzo’s original disclosure of the invention to the Invention Submission Corporation could not serve as evidence of conception because the handwritten date on the disclosure was not corroborated. Id. at 20–24. Furthermore, Cuozzo’s two-month delay in responding to a preliminary patent report and five-month delay in raising the funds to commence the patent process demonstrated a failure to exercise reasonable diligence in reducing the ’074 patent to practice. Id. at 24–28. Finally, Cuozzo sought to amend ’074 patent by substituting claim 10 with a new claim 21 that provided for a speedometer and a speeding indicator on the same LCD display. Id. at 47. PTAB found that Cuozzo’s proposed amendment would enlarge the scope of the claim and was therefore impermissible in an inter partes review pursuant to 35 U.S.C. 316(d)(3). Id. at 47–49. In a news release after the decision, Andrew Etkind, Garmin’s vice president and general counsel, praised the merits of the inter partes system, calling it “a quick and efficient method to kill invalid patents in contrast to the years of litigation required to reach the same conclusion through the federal courts.” According to PatentlyO, the decision illustrates willingness by PTAB to tackle to complex arguments concerning invalidity in an inter partes review. In time, the inter partes review may prove to be a valuable defensive tool for companies seeking to expeditiously defeat meritless claims of infringement.