A First IPR Decision on the Merits

Garmin v. Cuozzo Speed Tech, IPR2012-00001 (PTAB 2013)  Download Final decision-59

In its first full merits decision in an inter partes review case, the Patent Trial and Appeal Board (PTAB) has sided fully with the petitioner Garmin and ordered the three challenged claims cancelled. As you may discern from the docket number, this case was also the first IPR case filed on September 16, 2012 (the first day that such filings were allowed). The patent at issue is No. 6,778,074 and a parallel infringement lawsuit between Garmin & Cuozzo is pending in New Jersey District Court. Although the district court did not stay that case, Magistrate Judge Dickson has slowed the process to avoid making substantive decisions until the PTAB decision. In particular, the claim construction arguments have been delayed.

The patent itself is directed toward a speed-limit indicator tied to a GPS system that provides a signal to the driver when the care is moving faster than the speed-limit. Couzzo has accused several device makers (such as Garmin) as well as automobile manufacturers (such as Chrysler) of infringing the patent.

Garmin's IPR request actually challenged 17 claims of the '074 patent, but the PTAB only instituted the review for claims 10, 14, and 17 as such, it likely that Cuozzo will continue to pursue the litigation with a focus on the remaining claims. Those three claims were all found obvious by the PTAB. Based upon my quick read of the claims, independent claim 10 was the broadest in the patent and its elimination may give Garmin the opportunity to avoid infringement by pushing for a narrow construction of the remaining claims.

Four Reference Rejection: Patent attorneys regularly see obviousness rejections that hinge on the combination of four references.  However, the conventional wisdom is that those complex factual arguments are much less likely to fly in disctrict court litigation.  Here, the PTAB took on the challenge and found the patent obvious based upon four prior art references.  The take-away here is that the PTAB is ready and willing to handle complex invalidity arguments that might not work at the district court level. 


Claim Construction: One interesting aspect of the case is the way that the pending parallel litigation is clearly in the forefront of each decision by the parties. One limitation found in each claim of the patent is that a speedometer be "integrally attached" to a speeding-indicator. Couzzo that the proper construction of that term would require that the speedometer and speeding-indicator both be part of the same single component (i.e., shown on the same screen). On that point, the Board sided with Garmin – finding instead that the broadest reasonable interpretation of the claim scope required two separate components. In addition to making the claim more subject to prior art, the seeming result is also that a single Garmin device GPS cannot infringe unless somehow integrated with and integrally attached to a separate vehicle speedometer. Moving forward it will be interesting to see what level of respect the district court gives the PTO decision. I suspect that it will be given a great deal of respect.

Unable to Prove Early Conception  or Diligence: Two of the important prior art references used by the board presumptively qualify as 102(e) prior art in that the references are published US patent applications that were filed prior to Couzzo's application. Under the old first-to-invent rules, the law allows Couzzo prove a prior invention date. Here, Couzzo's proof failed because (1) his conception evidence was based solely on inventor testimony which is never sufficient without corroboration; and (2) his evidence of submission to the "Invention Submission Corporation" was insufficient because the date of submission was not corroborated by any testimony. Thus, the PTAB found that the earliest provable date of conception was December 2000 when the ISC patent attorney sent a letter to Couzzo referencing Couzzo's invention disclosure. Because Couzzo had not yet reduced his invention to practice as of that December 2000 date, the law also requires that he act with "reasonable diligence." Here, Couzzo received a search report from the patent attorney in January 2001; did not respond until March 2001; and did not explain why it took two months to provide comments or his daily progress on the matter. Then, later in March 2001 he received a new favorable patentability report from the patent attorney who stated he would begin work once Couzzo paid a $3,500 fee. However, he did not pay that fee until August 2001. Couzzo stated that he did not have the money at the time, but did not provide any daily progress reports showing what he was doing to get the money. The PTAB found that each of these gaps showed failure of diligence. As such, his attempt to antedate the references was rejected. The unfortunate problem here is that it looks like it was the complexity and tricks of the system that failed Couzzo and that, had he been blessed with more cash-on-hand and more sophisticated patent counsel then he would have avoided these key prior art references either by filing the patent application earlier or by ensuring documentation of conception and diligence. Soon after Couzzo's case was filed, the USPTO went after the Invention Submission Corporation as a scam. My understanding is that InventHelp is the successor-in-interest to ISC.


17 thoughts on “A First IPR Decision on the Merits

  1. 3

    Amusingly, or perhaps sadly, both sides missed the relevant prior art: speedometers on railroad trains equipped with Automatic Train Control. (“https://en.wikipedia.org/wiki/…”).Railroad signal systems have been transmitting speed limits to trains for at least half a century, and the speedometers in suitably equipped trains display that information. See the Wikipedia article for nice pictures of some of the displays. There are round displays with two pointers, round displays with illuminated arrows to show the speed limit, linear displays, and numeric displays. So this was done for “vehicles” (the patent claims over vehicles generally) a long time ago.This should have been caught during examination.

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    integrally attachedWhat possible difference would it make for patentability purposes whether the speedometer is “attached” or “integrally attached” to the “speeding indicator”? It’s not as if there is a bunch of prior art out there teaching how difficult is to “integrally attach” a measuring instrument to a warning instrument.Congrats to the PTO for not muffing this one.Patent attorneys regularly see obviousness rejections that hinge on the combination of four references. However, the conventional wisdom is that those complex factual arguments are much less likely to fly in disctrict court litigationA four or five-reference obviousness rejection is not necessarily “complex”. Such a rejection be just as straightforward and clear as a two-reference obviousness rejection.

    1. 2.1

      Note at p. 10 of the decision: “The term “integrally attached” does not appear in the specification and original claims of the application which was filed on March 18, 2002, and later issued as the ’074 Patent. The term was proposed during examination by amendment of application claims 1 and 11 to distinguish over Avada”In other words, in order to restore novelty, the PTO let them add an expression which did not exist anywhere in the application into the claims and which was arguably unclear, and then granted. It’s also worth noting that the discussion on the seemingly innocuous term “integrally attached” goes on for eleven pages of the decision, including expert testimony.From an European perspective, it is puzzling that both the Board and the petitioner kept on fighting on claim construction and then mounted an elaborate obviousness attack (which I haven’t finished reading) without finding any issue with the presence of this term in the claims to begin with. On this side of the Atlantic, such a thing would have likely led the proceedings to be closed within five minutes with the revocation of the patent….

      1. 2.1.1

        PTO procedure at its finest. And yes LBZ, stricter WD reqs could only be a good thing over here.


                What do you propose as ‘stricter’Perhaps something like “no introduction of elements or limitations using language that does not appear in the specification. Under any circumstances.”

                1. Yeah that would be one thing they could try. But I’m not particularly worried about the semantics at issue. If it were up to me, today, to put in a good stop gap measure without putting a huge amount of thought into it, I’d say that merely a requirement for the applicant to copy paste where he’s getting his WD from in the specification into his reply IN THE limited instance where he’s not using language verbatim from the originally filed application would suffice. To really add some flair to the situation, you can do that along with a checklist of things for examiners to do when they read amendments including boxes about did they read the part where applicant claims written description support is coming from and does it correspond reasonably to the language now being used. Though I’m actually a fan of some limited checklists being implemented for quality on all fronts. Try to keep them small tho ya know.

                2. I think you’re aware of my opinion on the doctrine of undeserved windfall for material you never claimed.

                3. “your view is known and disregarded as the rubbish it is.”How does this in any objective sense meet any norm for conversation?

                4. It is a notice that he should upgrade his views with a little thoughtful consideration.You are doing that charging at the red cape of ‘anon said’ thing again.

      2. 2.1.2

        Nice post LBZ. Given that both WD and the EPO’s “no new matter” requirement impose on admissibility of an amendment a sort of “novelty test” and since we all know what “novel” means, whereby the admissibility hurdle is set at exactly the same height, how can it be that the EPO test is lambasted as too strict while, here, the USPTO was not strict enough.Could it be that the necessary statutory provisions are already in place, but that PTO Examiners need to apply them competently?

  3. 1

    Garmin filed another IPR for this patent on June 20, 2013 (probably for the claims that didn’t get reviewed in the first IPR): IPR2013-00373.

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