Garmin Int’l, Inc. v. Cuozzo Speed Technologies LLC

 

Paper 15, January 9, 2013

IPR2012-00001 (JL) (Patent 6,778,074)

 

[An IPR is instituted with regard to a challenged claim only if petitioner can show reasonable likelihood that it will prevail on its assertion that this claim is unpatentable.

The Board may exercise discretion in instituting an IPR as to claims not explicitly challenged if it determines that a challenged dependent claim includes all of the features of an independent claim that was not explicitly challenged]

 

FACTS

Petitioner Garmin International Inc. requested an IPR of a patent owned by Cuozzo Speed Technologies LLC on the grounds of obviousness and anticipation. The patent disclosed a speed limit indicator where a rotating colored filter connected to a GPS is “integrally attached” to the face of a car speedometer such that it indicates the range of speeds that exceed the speed limit at that location. This is accomplished by retrieving the local speed limit from a database based on the GPS location and rotating the colored filter attached to the speedometer to an appropriate position so that the range of speeds exceeding the speed limit is covered by the filter making them appear in a different color. The petitioner challenged the patent as anticipated based on prior art teaching a digital speedometer capable of displaying the speed limit based on GPS location. The petitioner also challenged the patent as obvious over a combination of prior art above with another prior art reference teaching an immovable colored filter attached to the speedometer to make speed range over 55 mph appear in a different color, and a second prior art reference teaching that the colored filter could be made moveable.

 

HOLDING

As to claim construction, the Board interprets claim terms by applying the broadest reasonable construction in the context of the specification in which the claims reside. 37 C.F.R. § 42.100(b). Unless inventor acts as a lexicographer and sets forth a special meaning for the terms with clarity, deliberateness, and precision, the Board gives terms their ordinary and accustomed meaning as would be understood by one of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1326 (Fed. Cir. 2005) (en banc). Accordingly, the term “integrally attached” is interpreted to mean two elements physically joined together as a unit without losing their separate identity. The Board rejected petitioner’s contention that the terms should be constructed in accordance with assertions that the patent owner made in patent infringement litigation, but the Board did take into account prosecution history of the disputed patent in constructing the claims.

 

With respect to claims of anticipation, the Board held that to prevail on petition to institute IPR, petitioner must demonstrate that there is a reasonable likelihood that the petitioner will succeed with respect to at least one of the challenged claims. 35 U.S.C. § 314(a). The Board held that a claim is anticipated only if every element in the claim is found, expressly or inherently, in a single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Board found claims of anticipation to be meritless, concluding that petitioner did not demonstrate a reasonable likelihood that it will prevail in showing that a speedometer with a digital display capable of indicating the speed limit based on GPS location anticipated an invention disclosed by the Patent Owner whereby a separate but “integrally attached” colored filter accomplished the same function.

 

With respect to claims of obviousness, the Board held that the petitioner did not demonstrate a reasonable likelihood that it will prevail in showing that challenged claims are obvious over the following combination of prior art references: First reference teaching an immovable colored filter attached to a speedometer to make a range of speeds exceeding a certain limit appear in a different color. Second reference teaching a speedometer with a digital display capable of displaying the local speed limit based on GPS data. The Board found that the petitioner did not demonstrate sufficient basis to combine the teachings of these references.

 

However, the Board held that the petitioner did demonstrate a reasonable likelihood that it will prevail in showing that challenged claims are obvious over a combination of prior art references that, in addition to references described above, also included a reference teaching that the colored filter attached to the speedometer can be made moveable so that the range of speeds that appears in a different color can be changed. The Board instituted an IPR with respect to the patent claims challenged for obviousness over this combination of prior art.

 

Further, the Board exercised its discretion to institute an IPR with respect to some claims that were not explicitly challenged by the petitioner. The Board found that these independent claims were challenged by implication because the explicitly challenged dependent claims contained all of the features of these independent clams.

 

TAKEAWAY

    • An IPR is instituted with regard to a challenged claim only if petitioner can show reasonable likelihood that it will prevail on its assertion that this claim is unpatentable.
    • The Board interprets challenged patent claims broadly.
    • Unless the Patent Owner in its patent sets forth a clear definition of its own terms, the Board will interpret them in accordance with their ordinary and accustomed meaning as would be understood by one of ordinary skill in the art.
    • A claim is anticipated only if it is found in a single prior art reference.
    • A claim may be obvious over a combination of prior art if petitioner can show that there is sufficient basis to combine the teachings of the prior art references.
    • The Board may exercise discretion in instituting an IPR as to claims not explicitly challenged by the petitioner if it determines that the claims were challenged implicitly as when a challenged dependent claim includes all of the features of an independent claim that was not explicitly challenged.

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