Inter Partes Review: Winning by Losing

By Dennis Crouch

Garmin v. Cuozzo, IPR2012–00026, (P.T.A.B. 2013) Download Notice-15

In what appears to be the first Inter Partes Revew petition decided on the merits, the USPTO Patent Trials and Appeal Board (PTAB) has granted Garmin's petition for inter partes review of only claims 10, 14, and 17 of US Patent 6,778,074 owned by Cuozzo Speed Technologies LLC.  [See UPDATE BELOW] This is a mixed opinion because Garmin had requested IPR of claims 1–20. Inter Partes Review is a spawn of the America Invents Act (AIA) and serves as a more robust and rapid version of inter partes reexamination. In order to grant an IPR petition, the USPTO must determine that the petition shows "a reasonable likelihood that the petitioner would prevail." Now that the petition has been granted, the PTAB will move forward with the trial to determine whether those three claims are valid. Under the statute, the PTAB's determination as to whether to institute a PGR cannot be appealed. 35 U.S.C. § 314.

Cuozo originally sued Garmin, Tom Tom and several automakers for patent infringement in a New Jersey federal court. That lawsuit is still in the early stages of discovery, but the basic allegation is that Garmin's navigation systems infringe the '074 claims that are directed toward the use of encoded speed limit indicators. 

For Garmin, this may be a case of winning-by-losing.  In its IPR petition, Garmin suggested that the PTO use the broad claim construction suggested by Couzo's infringement allegations for the claim requirement that a "speedometer" and a "colored display" be "integrally attached".

The Patent Owner has taken a very broad view of the meaning of the claims based upon the allegations set forth in its complaint against the products of the real parties in interest here. The "broadest reasonable construction" of the challenged claims must be consistent with the allegations set forth in Patent Owner's civil complaint. Petitioner submits, for the purposes of the IPR only, that the claim terms are presumed to take on their ordinary and customary meaning that the term would have to one of ordinary skill in the art in view of Patent Owner's civil complaint and the Specification of the '074 Patent.

The PTO rejected the notion that the patent owner's post-patent-issuance civil complaint has any bearing on the claim construction and also found that the claim scope suggested unduly broad.

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. . . .

On this record, we construe "integrally attached" as applied to the colored display and the speedometer in the context of the disclosure … as meaning that the two elements are discrete parts physically joined together as a unit without each part losing its own separate identity. In the combined unit, the colored display is still the colored display and the speedometer is still the speedometer; each retains its own separate identity.

The PTAB went on to particularly find that a single display screen showing both the speedometer and colored display would not satisfy the integrally attached limitation as construed above.

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.

In the context of the inter partes review, the result is that the suggested references do not show the claims unpatentable. Garmin's gambit, however, is that the same narrow claim construction will carry-over to the litigation and result in a finding of non-infringement. Although the district court will not be bound by this construction, it is likely to be instructive and at least cognitively limiting to the New Jersey judge – especially since the PTO's interpretation is the 'broadest reasonable construction.'

UPDATE: It turns out that the PTAB has released at least one earlier petition decision – in IPR2012–00026 involving Microsoft’s challenge of ProxyConn’s Patent No. 6,757,717. In that decision, the PTAB granted the IPR for claims 1, 3, 10, and 22–24, but denied the petition to review claims 11, 12, and 14.

= = = = =

Under 35 U.S.C. § 316, the USPTO has one year from now to make a final determination in the case. The USPTO has scheduled for the trial to be complete in August 2013.

50 thoughts on “Inter Partes Review: Winning by Losing

  1. “For Garmin, this may be a case of winning-by-losing. In its IPR petition, Garmin suggested that the PTO use the broad claim construction suggested by Couzo’s infringement allegations for the claim requirement that a “speedometer” and a “colored display” be “integrally attached”.”

    Epic if this pans out for them.

  2. IT IS SHAMEFUL THAT OUR SYSTEM, WHICH IS THE GREATEST IN THE WORLD,SQUASHES THE INVENTOR,AND INNOVATORS OF TODAY,BY MERELY OUT PRICING SUCCESS FOR THE POOR.REMEMBER MOST OF GREAT IDEAS DID NOT COME OUT OF A LAB.

  3. I HAVE WHAT EVERYONE IS TELLING ME A ‘GREAT IDEA’,AND ‘HOW COME NOBODY THOUGHT OF THAT BEFORE?, ‘YOU NEED TO CHECK ON GETTING A PATENT!’. WELL I’M CHECKING, AND WHAT I WANT TO KNOW IS THERE REALLY SUCH A THING AS A PROBONO-PATENT -ATTY? I JUST DONT HAVE 1 IDEA. I HAVE A SECOND IDEA WITH AS MANY POSITIVE RESPONSES AND NOT YET ONE NEGATIVE. HOW DOES ONE GET A PATENT IF ONE HAS NO MONEY ?????????????? ARE THERE ATTYS/INVESTORS OUT THERE WHO WILL PAY FILE FEES FOR A PIECE OF MY PRODUCT????????? I HAVE A PROTOTYPE FOR A MECHANICAL RECOIL-REDUCTION DEVISE MOUNTED ON A 12GA. SHOTGUN(THIS IS NOT A BUTT-PLATE TYPE CUSHION OR RUBBER PAD. MY DEVISE IS CONTAINED WITHIN THE STOCK ITSELF). ALSO OUT OF THE “NESESSITY IS THE MOTHER OF INVENTION HANDBOOK” I HAVE MODIFIED A COMMON PAIR OF CRUTCHES, MY MODIFICATION REDUCES BODY IMPACT IN THE ARMPIT AREA OF THE BODY BY 50%+(IF THIS WAS NOT AN ISSUE, THEN WHY DID THEY PUT A COUSHION THERE IN THE FIRST PLACE. IF YOU STILL HAVE NO UNDERSTANDING OF THAT PAIN,THEN PASS THIS INFO TO SOMEONE WHO DOES! AND I WILL SHOW THEM WHAT I GOT!HAVE NO $$$$ NEED TO PROCEED-LETS WORK SOMTHING OUT!

  4. Thanks Leopold, for making the basic point, that the Petitioner has only to get as far as what one might express as “an arguable case” on obviousness. But my point is that, for me, the mere statement “D1 in view of D2, in view of D3, in view of D4″ doesn’t even rise to that.

    For me, this has nothing to do with the AIA, more to do with how the USPTO has always framed obviousness objections.

    You and I could discuss in this column whether the English test “arguable case” is tougher to meet than your “reasonable likelihood”. I would counsel against any continuation though. Somebody we both know well is just itching to write offensively yet again.

  5. You are a sad, lonely person, aren’t you?

    No. But thanks for caring. Using “kindness” as a deflection – you are studying MM only too well (and achieving the same misses, I might add).

    So I take it then that you will not be explaining your position and you are only too willing to leave it as a vapid and meaningless statement (as I said, your tutelage under MM is impressive).

  6. You are a sad, lonely person, aren’t you?

    And if you are so busy – may I suggest being ready to hold a discussion before you begin one?

    I didn’t begin a discussion with you; I responded to Max’s. But thanks for the advice.

  7. And I’ve told you this is not about arguing with me.

    Why do you insist on dwelling on something we both agree to?

    Oh wait – you still haven’t actually explained what I have asked you to explain. You still haven’t explained why you think the difference goes in one direction rather than the other (you seem to be waffling over whether there is even a difference, which is rather odd).

    So what you are doing is just kicking up dust instead of exploring a point that I asked about. I see – if you make this about me trying to be argumentative, you don’t have to actually explain your position. That deflection strategy does not work for MM, why do you think it will work for you?

    If you don’t have an answer, and want to just admit that you threw out a thought without really thinking about it, just say so.

    And if you are so busy – may I suggest being ready to hold a discussion before you begin one?

  8. I’ve told you three times that I’m not arguing with you, but you are clearly intent on picking a fight. I’m too busy.

    I’ve been as clear as I can be. If you’re not understanding me, then there’s nothing more that I can do. As to whether my original comment was “worthwhile,” I’ll have to be content to let Max be the judge of that, since it was directed at him.

  9. I then tried to say that the “reasonable likelihood” standard, as a general matter, is lower than “more likely than not.”

    tried to say? What does that mean? You either said it or you did not. No try.

    I wasn’t talking about your post

    But you responded to me at 9:05.

    In fact, I did not know that there was a change at all

    See above.

    You are comparing two different standards and you yourself are drawing a difference between the two, then you appear to be backpeddling furiously when that difference is being explored.

    You are being more than opaque. Or perhaps opaque is not the word you want to use.

    You are posting a comment and then abandoning that comment while trying to maintain that you said something worthwhile. And note, this is not about arguing with me – as I indicated, my initial thoughts was that your “position” was valid – it’s just that you don’t seem to have a position when being asked to explain yourself. In other words, you have made a comparison and noted a difference – don’t try to now say that the two are equivalent when asked to explain why you think the difference goes in one direction rather than the other.

  10. Regardless and immaterial to my post.

    I wasn’t talking about your post, I was talking about mine, which was in response to Max.

    Perhaps you can explicate your position a little more

    I would be happy to do so. Max was concerned that this decision had something to do with the standards used to determine obviousness. I commented that “the question at this level” is whether inter partes review should continue, and that the standard for deciding this question is a “reasonable likelihood” that the petitioner will prevail. I then tried to say that the “reasonable likelihood” standard, as a general matter, is lower than “more likely than not.” I did not mean to imply that the “more likely than not” standard ever applied in this or similar situations; I was just trying to place “reasonable likelihood” in the spectrum of standards for review, which includes such things as “more likely than not,” “clear and convincing,” “beyond a reasonable doubt,” etc.

    I did not mean to make any comment at all about any change in standard. In fact, I did not know that there was a change at all – I thought the standard for inter partes reexamination was similar. Your comment suggests that there was a change – I’m not arguing with you, because I don’t know.

    Sorry for being opaque.

  11. In comparing “reasonable likelihood” to “more likely than not” I was comparing them at a general level

    Regardless and immaterial to my post.

    I didn’t mean to imply that I was comparing a new standard to an old one

    I don’t understand this statement at all – how could you not be comparing the standards?

    Perhaps you can explicate your position a little more (believe it or not, my initial thought was along your lines, that the change was a change easier).

  12. If you’ve read the legislative history on this then you know more than I do. What was the old standard for inter partes reexamination – wasn’t it the same “reasonable likelihood that the requester would prevail on at least one claim”?

    In comparing “reasonable likelihood” to “more likely than not” I was comparing them at a general level; I didn’t mean to imply that I was comparing a new standard to an old one. My point for Max was simply that it’s easier to meet this “reasonable likelihood” standard then it is to actually invalidate the claim.

  13. MaxDrei,

    Make no mistake – the changes in the AIA were not meant to make our system better – they were meant to make our system closer to the rest of the world.

    The changes were pushed by Big Corp. And they really don’t care all that much about treating inventors, as they can rely on lots of other competitive tools than just mere innovation.

    If you had that dear “propensity to learn,” you would have recognized that we have discussed this many times in the past, and you would have thought twice about phrasing your post in the manner that you have.

  14. The standard of “reasonable likelihood” is less than ‘more likely than not.’

    I wondered about that – especially as the legislative history indicates the opposite, that the new standard was supposed to clamp down on the very high rate of granting review (this view coming not from me – so put down the quiver).

  15. Is that it? Is that all there is to prima facie obviousness?

    No. The question at this level is not whether the claim is obvious, but whether it should be looked at more closely. The standard of “reasonable likelihood” is less than “more likely than not.”

  16. I have been reading the APJ Decision. I get to page 22 and find something that upsets me. It reads “The combined teachings of T.., A… E… and W…apperars to account for all of the features of claim 17. ACCORDINGLY (my emphasis added) there is a reasonable likelihood that P would prevail on its assertion that claim 17 would have been obvious…”.

    So all you need to do, as a USPTO Examiner, to establish a case of obviousness, is find each “feature” of the claim disclosed in one or another prior publication. Even if it takes 4 references to get mention of every single one the features, the claim is then prima facie obvious?

    Is that it? Is that all there is to prima facie obviousness? After that, the burden switches to the Applicant?

    Seriously? If so, it is a disgrace, shameful, and grotesquely unfair to inventors. Come on USA. With your patent system which we are constantly told is “the envy of the world”, you can treat your inventors better than that.

  17. I think that this decision is an unfortunate outcome for the challenger. If the patent owner, in a US court, takes a position that a patent claim term means something, and the patent office decides it doesn’t, then then claim should be invalid at least under 112 or if a narrower construction is necessary to avoid art (invalid for 102/103).

    Seems pretty simple.

    What I think ultimately doomed that approach here was: “In any event, the Petition itself does not disclose or discuss the Patent Owner’s position …”. What? Why wouldn’t you state, “the Patent Owner, in the proceeding before a Federal court, stated that this claim term means …”. Did they do that?

  18. It’s not a struggle MaxDrei – it’s a propagandafest.

    And it should come as no surprise – see link to patentlyo.com and link to patentlyo.com as the battle is bigger than this blog, and has been raging for far, far longer.

    That this blog has its regular (third-party influenced) and other purely-dogmatic posters (who have no interest in any intellectualy honest discussion) is no surprise either. When you have an agenda to push, you do not have a mind desirous of learning. And you yourself have blatantly stated that you will continue to push your agendas, even when faced with plain fact and plain law that dispelled that agenda.

    As to “struggle,” – not really. There is no real struggle because those with agendas do NOT have law or facts on their side. It’s quite easy, actually, to refute the (continuous) lame posts (witness the Calvinball tattooed face of IANAE, for example).

  19. is Max the man with the dead horses, or is he one of the dead horses? If the latter, who is the man with them?

    Maybe it’s the ghost of Justice Douglas. Or somebody pretending to be the ghost of Justice Douglas. I’m guessing if you check the files you’ll find that the minority report is missing for every one of those horses.

  20. The “horse led to water but dying of thirst” is a line indicting MaxDrei and his old line about “wanting to learn,” yet never doing so (thus casting asperions on his proclaimed desire).

    So is Max the man with the dead horses, or is he one of the dead horses? If the latter, who is the man with them?

    I assure you that my difficulty in understanding is genuine.

  21. You can’t understand it Leo? I can’t either. anon asserts that’s because (see his little list below) yours and mine (not to mention MM’s and IANAE’S and 6′s and Ned Heller’s) is a mind desirous of misunderstanding.

    What a struggle life must be, I must say, when everybody’s out to get you, deliberately making every effort to misunderstand what one writes.

  22. Leopold,

    If you had a mind willing to understand (instead of trying to not understand) youwould recognize several points made in one sentence.

    The “horse led to water but dying of thirst” is a line indicting MaxDrei and his old line about “wanting to learn,” yet never doing so (thus casting asperions on his proclaimed desire).

    The “open your eyes” is a line indicting you and your “I can’t see anything but what anon posts” obsessive behaviour.

    This really is not that difficult – unless you are trying not to understand.

  23. You need a metaphor mixed, anon’s your man.

    Indeed. I’m still trying to decipher this classic from yesterday:

    LOL – taking pleasure in the company of the man with the stack of dead horses next to the water well is not a good thing (you would know that if you opened your eyes).

    I’m pretty sure someone is being insulted, but that’s as far as I can get. If the horses refuse to drink after being led to the water, is it the fault of the man who led them there? Perhaps only if they were already dead before he led them there? Or maybe the man is beating the dead horses? But what’s the water for, then? And how does the blind person enter into all this?

  24. Nice misfire MaxDrei.

    Perhaps instead of accusing me of deliberately misunderstanding, you should try harder to actually understand the law and think before you post?

    Just a thought.

  25. Let’s think now. Have we ever encountered a mind “desirous of misunderstanding”. Anybody round here fit that description?

    I can think of quite a few: MaxDrei, MM, Ned Heller, IANAE, Leopold Bloom, 6.

    Thanks for asking.

  26. That is interesting.

    Since it seems legal (and thereby “acceptable” in the eyes of some) to create shell corporations for the purpose of filing patent suits, is it likewise legal for a company who wishes to see a certain patent re-examined to create (or cause to be created) a separate and uncontrolled corporate entity for the purpose of filing a re-exam? If there was no control of this second entity by the first entity (and therefore nothing behind the corporate veil), it seems that estoppel could be avoided this way.

  27. Interesting aspect of this case is that none of the other defendants in this case participated in the IPR and thus are unlikely to face the estoppel associated with an IPR filing.

  28. The USPTO: On this record, we construe “integrally attached” as applied to the colored display and the speedometer in the context of the disclosure … as meaning that the two elements are discrete parts physically joined together as a unit without each part losing its own separate identity.

    Elsewhere in their opinion did the PTO explain the difference between “integrally attached” and “attached”? What does “integrally” add to the claim (or was it read out of the claim)?

  29. In case anybody is wondering about the origin of the “mind willing to understand” to which IANAE has alluded, here it is, in EPO Decision T_0190/99, para 2.4 of the Reasons, the Doctrine of Synthetical Propensity”:

    2.4 The board adds that the skilled person when considering
    a claim should rule out interpretations which are
    illogical or which do not make technical sense. He
    should try, with synthetical propensity i.e. building
    up rather than tearing down, to arrive at an
    interpretation of the claim which is technically
    sensible and takes into account the whole disclosure of
    the patent (Article 69 EPC). The patent must be
    construed by a mind willing to understand not a mind
    desirous of misunderstanding.

    Let’s think now. Have we ever encountered a mind “desirous of misunderstanding”. Anybody round here fit that description?

  30. I’m still laughing as I type these words. Many thanks IANAE

    I could try and smuggle one through customs, but why bother? The proffered gift would be disdained. A mind willing to understand is the last thing the man would want infecting him, for that would deprive him of the feelings of satisfaction he gets, every time he deliberately misunderstands in order to notch up another “beatdown”.

  31. But it is funny that IANAE is offering advise. Advise on receiving Calvinball face spikes is probably not what MaxDrei is looking for though.

  32. Maybe that’s why he bristles at the thought of having to write something clear in order to get a claim allowed.

    Unsubstantiated – and untrue.

    Try again IANAE.

  33. I can’t find in it anything that inspires me to respond.

    I can’t find in it anything that Google can translate to English. Maybe that’s why he bristles at the thought of having to write something clear in order to get a claim allowed.

    Max, you have the mind willing to understand over there, right? Think you could sneak one through customs for anon?

  34. Thanks Paul. I have said above what doctrines inflate the amount of “room” in which to “wiggle” the nose back and forth, making more uncertain the outcome of any infringement suit. If they want to, the courts could narrow that room. But do they want to? I think not.

  35. Your lack of “finding something inspiring to respond” is not surprising.

    It’s called “getting the better of you.”

  36. And some of those uses of nose of wax are amusing* in their irony – particularly thinking of the admonition from Stevens, just before he does exactly that with the (implicit) language of the law of 101 rather than with claim language.

    *amusing, but not in a ha-ha funny type of way.

  37. Claims interpreted the same in litigation as in the PTO???

    Besides the amusingly apt Angorra Cat analogy above, to many patent attorneys a claim in a patent has always been considered a “nose of wax”, which may be turned and twisted in any direction to sue on after it gets allowed by the PTO. White v. Dunbar, 119 U.S. 47, 51 (1886). [The expression is Biblical]. There are reportedly at least six Supreme Court opinions using this “nose of wax” phrase between that Supreme Court and now, as well as many lower court opinions.

  38. Readers, I was hoping for a response from somebody. Now I’ve got a response though, I can’t find in it anything that inspires me to respond. I’m lost for any words that would be of any interest to the general reader.

    I dare say that others will write something though.

  39. “Inter Partes Review is a spawn of the America Invents Act (AIA) and serves as a more robust and rapid version of inter partes reexamination.”

    Thanks for the chuckle, D.

  40. From the juxtaposition of your initial post and your defense of BRI, I am left with the distinct impression that you don’t know what you are talking about.

    Your initial post calls for one meaning and one meaning only. You do not (and cannot) have this with BRI, as BRI is (as you hint at in your second post) an examination tool. Either the claims mean what they say – and only what they say (the one and only one meaning path), or they are allowed to have multiple meanings by different people during different times for different purposes.

    Btw, your response hypo of an amendment – being a change in terms does not eliminate BRI, as BRI is likewise applied to the new terms. As such, it really is only tangential to the underlying issue of “one and only one meaning.” In your hypo, you are assuming that the examiner’s BRI is actually the one an only correct meaning, but that that meaning was not the intended meaning. Equally plausible (or perhaps even more plausible) is that that assumption is not sustainable, that the examiner is not correct in their broadening interpretation, and that your “oh it’s easy, just make an amendment” is in fact, NOT an adequate (or advisable) solution.

  41. Do I think that BRI is improper? No.

    The way I see it, claims are fit to go to issue when they are clear, and it is the duty of PTO Examiners to object until the claim is clear enough.

    One way to steer claims toward clarity is to construe them reasonably but widely. Give unclear claims the BRC treatment.

    Applicant splutters and says that this is an unfair reading because Examiner is not taking the context into account. Examiner can then reply that the way to make progress is easy: just amend the claim until it clearly conforms to the meaning intended by the drafter of the specification. Then, for the first time, it has one (and one only) clear meaning.

    To my mind, the biggest impediment to the achievement of such clarity is 112-6 and the notion that claims cannot be ascribed a meaning until the entire wrapper has been read and digested. The EPO requires a level of clarity that leaves claims clear even when standing alone. Europe has in mind the needs of members of the public reading the claims of an issued patent and needing to know in reasonable time where they stand, on infringement clearance.

    But each to his (or her) own. Vive la Difference.

  42. Well, the litigation will not be stayed with different claims at issue in each proceeding. For most trolls this is a huge win. Few such cases go to trial, and the battle will now rage on two fronts adding more leverage for the troll. Nice attempt at a spin though.

  43. One would like to think that a single patent claim has one meaning, and one meaning only

    So…

    …do you think that BRI is improper?

  44. Fascinating. Reminds me of Dr Mario Franzosi’s long-haired Angorra cat analogy for an asserted patent claim. In the District Court, with its hair standing on end, helped by doctrines like the DoE, it appears enormous. Back at the granting authority though, where validity is being tested, the cat looks tiny, drenched as it is in BRC.

    Of course the cat analogy is in the context of bifurcated trials of infringement and validity, as in Germany and as contemplated in the new pan-European patent litigation regime. One would like to think that a single patent claim has one meaning, and one meaning only. For that reason, I do hope this case in the US jurisdiction stimulates thoughtful and influential comment.

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