USPTO Issues First Decision Under Inter Partes Review Process, Sides with Garmin International

Garmin International, Inc. v. Cuozzo Speed Technologies, LLC, IPR2012-00001,
Paper 59 (PTAB Nov. 13, 2013).

Written by Dorothy P. Whelan and Karl Renner.

On November 13, 2013, the Patent Trial and Appeal Board (PTAB) issued the first final written decision in an IPR proceeding. The PTAB held that the three claims that were the subject of the trial were unpatentable as obvious over combinations of multiple references. Several aspects of the PTAB's decision are notable.

1. Timing

Cuozzo filed its IPR petition on September 16, 2012. The PTAB granted the petition as to certain grounds and instituted trial on January 9, 2013. The PTAB issued the final written decision on November 13, 2013. Thus, the PTAB's final written decision came well before the one-year deadline from institution to final written decision.

2. Grounds

The PTAB's final written decision was based upon the same grounds and same claims that formed the basis for its decision to institute the trial. Each ground consisted of multiple references (three references in one case, and four references in the other).

3. Claim construction

The PTAB devoted a substantial portion of its opinion to claim construction, and offered a detailed, thorough analysis justifying its claim construction. In particular the PTAB explained why the intrinsic evidence supported its claim construction, rejected the opinion of Cuozzo's expert in part based upon statements made during his deposition, and explained why the doctrine of claim differentiation did not support Cuozzo's proffered construction.

4. Swearing behind prior art references

Two of the references qualified as prior art under 35 U.S.C. 102(e). Cuozzo attempted to swear behind them. The PTAB held that Cuozzo failed to establish both an earlier conception date and diligence from conception to reduction to practice. The PTAB's discussion of the issue provides useful guidelines for practitioners who are considering swearing behind a reference. Here, the PTAB rejected Cuozzo's evidence regarding conception because Cuozzo failed to provide documentary evidence corroborating the inventor's oral testimony. The PTAB also held that Cuozzo failed to provide evidence sufficient to explain two gaps in Cuozzo's activities offered as proof of diligence.

5. Teaching away

Cuozzo argued that the prior art taught away from the claimed invention because the prior art was directed to solving a different argument. The PTAB rejected Cuozzo's argument. Its reasoning suggests that it will impose a high bar for establishing that a reference teaches away from the claimed invention. The PTAB stated:

To constitute properly a "teaching away," the teaching must be evaluated from a technological perspective, not merely a comparative perspective. For instance, it is not a "teaching away" of significance unless one with ordinary skill in the art would have understood the teaching as conveying that the method or structural configuration at issue reasonably cannot be expected to achieve what it is required to achieve according to the claimed invention.

6. Motion to amend

The PTAB denied Cuozzo's motion to amend because the proposed substitute claims were broader than the original claims.

For more information, or to discuss this decision with a member of our post-grant team, contact us.