Yesterday, the Patent Trial and Appeals Board ("PTAB") issued a decision in the first IPR filed, i.e., IPR2012-00001. Garmin International, Inc. ("Garmin") filed the IPR on a patent owned and asserted by Cuozzo Special Technologies LLC ("Cuozzo"), U.S. Patent No. 6,778,074 covering a speed limit indicator.
Central to Garmin's IPR Petition and the PTAB's decision was the meaning of the claim term "integrally attached" as used in the claim phrase "a speedometer integrally attached to said colored display." Garmin argued that, for the purposes of the petition, this term should be given the broad construction urged by the Patent Owner in the related litigation of the '074 Patent. Garmin did not identify its proposed construction. The PTAB rejected this approach.
In denying Garmin's petition for seventeen (17) of the twenty (20) claims identified in the petition, the PTAB rejected the Patent Owner's construction of "integrally attached:"
Petitioner does not make known its construction of "integrally attached." Instead, Petitioner states that the term has to mean, in this proceeding, what the Patent Owner asserts it means in the infringement suits the Patent owner has filed against various parties including Petitioner. That argument is without merit. The meaning of claim terms is not governed by what the Patent Owner says they mean in filing an infringement suit based on the '074 Patent. There is no reason to assume that the Patent Owner's litigation position is correct. Litigation positions taken subsequent to issuance of the patent are unreliable. See Phillips v. AWHCorp., 415 F.3d at 1318. In any event, the Petition itself does not disclose or discuss the Patent Owner's position and Petitioner even states that the Patent Owner's litigation position in the infringement suits is not necessarily correct.
Instead of adopting the broader construction urged by the Patent Owner in litigation, the PTAB adopted a narrower construction that excluded prior art speedometer displays wherein the colored display and the speedometer are part of "a single component which performs the function of both the speedometer and colored display:"
The single electronic display screen of Aumayer showing both the image of a speedometer and a colored scale mark indicating the current speed limit does not meet the claim recitation "integrally attached" as applied to a speedometer and a colored display. There, the speedometer and the colored display are not discrete and separately recognizable parts that are "integrally attached" to each other. Rather, the liquid crystal display screen is itself a single component which performs the function of both the speedometer and colored display.
Moreover, Garmin's petition did not assert that the prior art rendered obvious the independent claims, instead it relied only on the anticipation of such claims by the prior art. In ruling the dependent claim 17 would have been obvious, however, the PTAB held that independent claim 10 would have been obvious over a combination of the prior art disclosing the claimed features, notwithstanding that the petition did not argue that independent claim 10 (and dependent claim 14) were obvious over the prior art:
Because claim 17 depends on claim 14 which depends on claim 10, and because dependent claims include all of the features of the claims on which they depend, Petitioner also has shown a reasonable likelihood that it would prevail on demonstrating that claims 10 and 14 would have been obvious over the combined teachings of Aumayer, Evans, and Wendt. We recognize that Petitioner did not specifically articulate a ground of unpatentability against claims 10 and 14 based on Aumayer, Evans, and Wendt. However, we exercise discretion to recognize that the assertion was implicitly made by Petitioner's alleging that claim 17 would have been obvious over Aumayer, Evans, and Wendt.While this decision appears to be a mixed bag for Garmin, the reality is that the PTAB construed a critical claim term in a manner that was significantly narrower than the Patent Owner urged in litigation. Presumably, Garmin hoped either that a broad construction would result in the claims being held invalid or hopes that a narrow construction will eventually lead to a successful non-infringement defense in litigation. This assumes, of course, that the district court will adopt the construction given by the PTAB.
This decision raises several interesting issues regarding the analysis of the PTAB. At first blush, the PTAB appears to give little, if any, deference to claim constructions urged by the Patent Owner in litigation. Also, it appears that the PTAB is willing to adopt arguments not expressly set forth in the petition provided that they are at least raised implicitly. Lastly, it is noteworthy that the PTAB issued its decision only 26 days after the Patent Owner filed a waiver regarding its right to file a preliminary response under 37 C.F.R. § 42.17(b).
Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC, Case IPR2012-00001 (JL) (January 9, 2013).
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.