In its first inter partes review (IPR) decision, the Patent Trial and Appeal Board (PTAB) indicated that it is willing to find obviousness based on a combination of as many as four prior art references, a number which would be unusual in typical district court patent litigation. Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper No. 59.
The PTAB held that claims 10, 14, and 17 of Cuozzo’s U.S. Patent No. 6,778,074 (“the 074 patent”) were unpatentable under 35 U.S.C. § 103 under two separate obviousness analyses. The claims in the ’074 patent were drawn “to a speed limit indicator and method for displaying speed” of a vehicle and the relevant speed limit at a current location of the vehicle. Id. at 3.
The PTAB found claims 10, 14, and 17 obvious over two different multi-reference combinations, a three-reference combination and a four-reference combination. The references the PTAB relied on in its analysis were not directed to complex technology, essentially dealing with the concept of attaching a colored speed limit display to a speedometer and using a GPS unit to provide location and speed limit information to a display controller. It is uncertain whether the Board will be willing to consider multi-reference combinations when dealing with more complex technologies.
In addition to finding the claims obvious over two multi-reference grounds the PTAB also provided a detailed analysis of the highly contested claim construction of the limitation “integrally attached” as recited in independent claim 10 of the ’074 patent. Id. at 12. The decision included five pages of analysis of this short phrase, which shows the detailed level of consideration of claim construction that the Board has frequently provided.
Cuozzo argued that its specification sufficiently disclosed a device in which the speed of the vehicle and the speed limit at the current location of the vehicle are both displayed on the same LED device and that the claims should be interpreted to cover this integral display. The Board disagreed, finding that the broadest reasonable interpretation of the claim required that the colored display and the speedometer were “joined together as a unit without each part losing its own separate identity.” Id. at 8-9. This claim construction meant that Cuozzo’s claim, even if held patentable, would not cover a device where the speed limit and current speed of the vehicle are displayed together on the same LCD screen. Id. at 15-16. In construing the claims, the Board specifically noted the differences in the rules governing claim construction by district courts and the PTAB in an inter partes review, signaling that the Board will strictly adhere to the current “broadest reasonable interpretation” (BRI) of claims. Id. at 17.
In its Motion to Amend Claims, Cuozzo attempted a “back door” approach to address the claim construction issue. Cuozzo proposed modifying the claims in such a way that the Board’s construction of “integrally attached” would be illogical. However, the Board found that the proposed amendments both impermissibly broadened the claims and had no written description support in the original specification. Id. at 48-49.