Just ten months after issuing its Decision to Initiate Trial in the very first Inter Partes Review (“IPR”) proceeding (IPR2012-00001, Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC ), the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) has issued a Final Written Decision in favor of the Petitioner, Garmin. In its Decision, the PTAB found the claims at issue to be unpatentable as obvious in view of the cited prior art, and further denied Patent Owner Cuozzo’s Motion to Amend the claims.
We previously discussed IPR proceedings on August 6, 2012, and September 21, 2012, which came into effect on September 16, 2012, in accordance with the provisions of the America Invents Act. Garmin has a parallel infringement lawsuit pending in the District of New Jersey, and was first in line in September 2012 to request to petition the PTAB to initiate an IPR proceeding for the purpose of invalidating Cuozzo’s speed limit indicator patent (U.S. Patent No. 6,778,074). Cuozzo’s patent (“the ‘074 patent”) is directed toward a speed limit indicator and method for displaying speed and speed limit information during the operation of a vehicle. Garmin originally sought to invalidate all twenty claims of the ‘074 patent, but the PTAB denied Garmin’s petition on all, but three claims (claims 10, 14, and 17).
In its Final Written Decision, the PTAB followed USPTO rules of claim construction under which claim terms in an unexpired patent are interpreted according to their broadest reasonable construction. The PTAB found Garmin’s three and four prior art reference-based obviousness arguments to be sufficient to invalidate the claims at issue, and denied Cuozzo’s Motion to Amend the claims by finding the proposed amendments to be broadening and unsupported by the patent specification. The PTAB in addition rejected Cuozzo’s efforts to swear behind several of the references based on Cuozzo’s inability to demonstrate a diligent reduction to practice following its conception of the claimed invention.
As of November 14, 2013, 652 petitions for IPR review have been filed with the PTAB in a little over one year since the inception of these proceedings, rivaling for example, the numbers of patent suits filed in district courts in both Delaware and the Eastern District of Texas over the same time period. Given the anticipated lower costs and faster dispositions for IPR proceedings as compared to patent suits, as well as the arguably lower thresholds available to patent owners for proving invalidity, it is highly likely that this trend will continue.
Gibbons will continue to monitor trends in relation to IPR and other post-grant proceedings.