Garmin v. Cuozzo (IPR2012-00001, Paper 15): The Decision to Institute the First IPR

Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, was the first inter partes review. Garmin filed its petition on September 16, 2012, the day IPR became available, challenging claims 1–20 of U.S. Patent 6,778,074. The Board’s decision to institute, Paper 15, was entered on January 9, 2013, together with a scheduling order.

This note covers the institution decision. Other papers from the same proceeding are covered separately: the additional discovery decision (Paper 26) and the two motion-to-seal decisions (Paper 34 and Paper 36).

Background

The ‘074 patent describes a speed limit indicator. A GPS receiver looks up the speed limit for the vehicle’s current location, and a colored display, in the disclosed embodiment a red filter rotated over the speedometer, marks which speeds exceed the limit. Independent claims 1 and 10 both require “a speedometer integrally attached to said colored display.”

Garmin asserted ten grounds of anticipation and obviousness based on references named Aumayer, Tegethoff, Tokunaga, Evans, Wendt, Awada and Hamamura. Cuozzo waived its preliminary response under 37 C.F.R. § 42.107(b). The question was whether Garmin had shown a reasonable likelihood of prevailing on at least one claim, the threshold in 35 U.S.C. § 314(a).

What the Board decided

Claim construction came first. Applying the broadest reasonable construction under the rule then in force (37 C.F.R. § 42.100(b)), the Board noted that the outcome “hinges” on “integrally attached.” Garmin had not offered its own construction. It argued instead that the term should mean whatever Cuozzo said it meant in its infringement suits. The Board rejected that approach: a patent owner’s litigation positions do not control claim meaning, and the petition did not even describe them.

The Board construed the term to mean that the speedometer and colored display are discrete parts physically joined as a unit, each keeping its separate identity. It relied on the specification, which describes the colored display as separate from the speedometer backplate, and on the prosecution history, where the applicant cited those separate components as support for the amendment adding the term.

Most grounds failed under that construction.

• Aumayer and Tegethoff each used a single electronic screen to show both the speedometer and the speed-limit mark. One screen performing both functions is not two parts integrally attached.
• Tokunaga did not describe how its lighting unit would be attached to a speedometer, and its speed limit was not tied to the vehicle’s location.
• Evans disclosed a colored plate fixed to a speedometer cover, but Garmin gave no credible reason why a skilled person would combine a fixed plate with the dynamic, location-based displays of Aumayer or Tegethoff.

Claim 17 survived. Claim 17 adds a controller that rotates a colored filter. Adding Wendt, which taught a rotatable speed-limit indicator, the Board found a reasonable likelihood of showing claim 17 obvious over Aumayer, Evans and Wendt, and over Tegethoff, Awada, Evans and Wendt.

Claims 10 and 14 came along. Claim 17 depends from claim 14, which depends from claim 10. Although Garmin had not expressly applied those combinations to claims 10 and 14, the Board treated the challenge as implicitly made, reasoning that a dependent claim includes every limitation of the claims it depends from. Trial was instituted on claims 10, 14 and 17 on the two combinations only, and every other ground was denied.

Why it matters

• The petitioner must commit to a construction. Pointing to the patent owner’s litigation positions did not work. Today 37 C.F.R. § 42.104(b)(3) requires the petition to state how each challenged claim is to be construed. See claim construction during inter partes review.
• Construction can decide institution. One construed term disposed of nearly all ten grounds.
• Motivation to combine needs an explanation. The Evans combinations failed because the petition did not explain why the fixed plate would be used with a dynamic system.
• Early practice allowed partial institution. The Board picked out claims and grounds for trial. That practice no longer exists (see below).

Later developments

The proceeding went on to a final written decision and an appeal that reached the Supreme Court. In Cuozzo Speed Technologies, LLC v. Lee (2016), the Court upheld the USPTO’s use of the broadest reasonable interpretation standard in IPR. It also held that 35 U.S.C. § 314(d) largely bars judicial review of institution decisions, which disposed of Cuozzo’s argument that the Board had wrongly instituted review of claims 10 and 14 on grounds the petition did not expressly assert against them.

Two later changes matter for anyone reading this decision now. For petitions filed on or after November 13, 2018, the Board construes claims under the Phillips standard used in district court rather than the broadest reasonable interpretation. And after SAS Institute Inc. v. Iancu (2018), the Board may not institute on only some challenged claims; see PTAB guidance after SAS.

Key takeaways

• Paper 15 instituted the first IPR on only three of twenty claims.
• The construction of “integrally attached” defeated most grounds; a petitioner’s reliance on the patent owner’s litigation positions was rejected.
• The Board treated a ground against dependent claim 17 as implicitly challenging claims 10 and 14, a point the Supreme Court later held unreviewable.
• Claim construction standards and partial institution have both changed since 2013, so the decision is best read as history.