Authored by A. Antony Pfeffer
In the first final written decision (IPR2012-0001, Paper 59) in an IPR, APJ’s Lee, Thierney, and Cocks ruled that all of the claims for which trial was instituted were unpatentable.
IPR2012-0001, Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC, was the first IPR filed. The petition for IPR had requested review of all 20 claims of U.S. Patent 6,778,074, but trial was instituted only for claims 10, 14, and 17. For the remaining claims, trial was not instituted as a result of a narrower claim construction adopted by the PTAB then proffered by the petitioner. However, it appears from the papers that this narrower claim construction may have provided the petitioner with additional noninfringement positions in any district court litigations. In fact, during the trial the patent owner also argued for a broader construction of this same claim term than the PTAB adopted. The technology at issue generally dealt with an automobile system that would indicate both the speed of a vehicle, and the speed limit in the area. The claims stated that the speedometer and a display regarding the speed limit were “integrally attached”. As construed, the term integrally attached required these two displays to be separate displays that were attached, and not a single display showing both the current speed and an indication of the speed limit.
In this proceeding, the patent owner also attempted to antedate some of the prior art references. However, for its earliest proffered date of conception, a declaration of the inventor was provided, without corroboration, to attempt to establish an earlier date of conception. This declaration did not address several key limitations of the claims. The patent owner also presented a document to establish an earlier date of conception; however this document was signed and dated by the inventor, without any other witness or evidence as to the truth of its date. However, there was evidence that some months later this document was sent to the patent applicant’s attorney; this later date was accepted by the PTAB as the earliest date of conception for the asserted claims. However, there were two periods of inactivity between this date of conception and a reduction to practice – one measuring two months and the other measuring five months. The PTAB held that these periods of inactivity precluded a finding of reasonable diligence. Accordingly, the PTAB found that the patent owner had not antedated the prior art references.
The PTAB proceeded to find claims 10, 14, and 17 to be unpatentable as obvious in light of two separate combinations of art, rejecting the patent owners arguments, including arguments with respect to teaching away.
The patent owner had also moved to amend its claims to require that the speed of the vehicle and the indication of the speed limit be shown on the same display, however, these proposed substitute claims were rejected by the PTAB for lack of written description support and for improperly enlarging the scope of the claims.
So, at least as of today, petitioners are batting a thousand in instituted IPR trials. We will have to wait to see what the success rate in IPR’s are over the long haul.