November 13, 2013
Petitioners Strike First: PTAB Issues First Final Decision – Claims Unpatentable and Motion to Amend Denied
We finally made it! Almost 16 months after Garmin kicked off this fun IPR roller coaster we have been riding, the PTAB has issued its first Final Written Decision, finding that all three claims-at-issue in the IPR trial styled as Garmin Int’l, et al., v. Cuozzo Speed Tech. LLC, IPR2012-00001 (Paper 59), involving U.S. Patent No. 6,778,074, are unpatentable and that Patent Owner’s motion to amend is denied.
By way of brief procedural history, Petitioner initially sought an IPR trial on 20 claims of the ’074 patent. In its decision to institute the trial, however, the Board found that there was a reasonable likelihood of unpatentability with respect to 3 of the 20 challenged claims. Of course, as the trial progressed, this case gave us the now ubiquitous Garmin factors for proving the required “good cause” to obtain additional discovery.
Turning to the actual decision, we note that the details of the technology involved, and other aspects of the ’074 patent, were set forth in the Decision to Initiate. As such, we focus here on what struck us as the most interesting aspects of the Board’s Final Written Decision:
- In general, the Board’s extensive 50-page decision is detailed, well-sourced, and unambiguous. The Board refers often to relevant Federal Circuit case law and to the record (such as deposition testimony, briefing, and oral hearing argument) as part of a methodical treatment of all the defenses raised by Patent Owner.
- The meaning of the term “integrally attached” was a key component of both the Decision to Initiate and the Final Written Decision. The Board did not change its definition from its initial decision to the final decision, despite Patent Owner’s strong opposition thereto (including at oral argument).
- While ostensibly working under the “broadest reasonable interpretation” claim construction standard, the Board’s analysis mimics that engaged by a federal court – relying on the intrinsic evidence of the ’074 patent. There is nothing discernible from the decision that would indicate how a district court would have come to a different claim construction analysis than that adopted by the Board, despite the ostensibly different standards.
- In coming to its claim construction decision, the Board discounted the expert testimony provided by Patent Owner because that testimony, regarding what one of skill would have known, was vague. The Board could not discern “just how much is deemed to be described by the disclosure itself, and how much is filled-in or completed by one with ordinary skill in the art, who possesses ordinary creativity and is not an automaton.” Order at 14. Further, “[w]hat would have been obvious to one with ordinary skill in the art does not establish what actually is described in the specification.” Id. This is an ongoing theme with the Board in their consideration of expert testimony – mere allegations that mimic attorney argument are not enough, even if coming through the mouth of an expert. The Board is requiring a detailed and factual basis for the opinions of these experts.
- Patent Owner sought to constrain the Board’s construction of “integrally attached” by referring to a district court case that construed “integrally connected.” The Board explained why the terms were different, in the context of this IPR, but also more broadly suggested that comparison of two terms from different proceedings will not be given much weight in the future. To that end, the Board pointed out that the patents had different disclosures; the field of invention is not the same; the level of ordinary skill in the art was different; the context in which the terms were used in the claims was not discussed by Patent Owner; and, of course, the terms “connected” and “attached” are different. Order at 16-17.
- The Board engaged in an extensive discussion relating to the priority date of the invention, including evidence of earlier conception and reduction to practice. Among that evidence included a denial of Patent Owner’s use of a speeding ticket as corroborating evidence: “Exhibit 3001 corroborates only that the inventor received a speeding ticket on November 28, 1999, not anything that [inventor] conceived on that day.” Order at 21. As to other purported corroborating evidence, Patent Owner did not offer the testimony of a witness who purportedly signed the document and did not properly establish the document as a business record. Order at 23.
- The Board went on to discuss the inventor’s reasonable diligence in reducing his invention to practice, finding inadequate justification for two periods of “little activity” – one period spanning 2 months, and the other spanning 5 months. Order at 25. As a cautionary note, the Board found that Patent Owner’s excuse for the delay – a difficulty in obtaining money to file for patent protection – may have been satisfactory. In this case, however, the delay was deemed too long because Patent Owner did not adequately explain such difficulties in obtaining the required money. Order at 27. Again, the lack of a factual basis for a position.
- The Board’s ultimate comparison of the properly construed claims to the prior art was similar to the analysis from its Decision to Institute. Ultimately, having decided the “integrally attached” claim construction issue, the art disclosed each element of the challenged claims and the Board did not accept Patent Owner’s teaching away arguments.
- Lastly, the Motion to Amend Claims was denied by the Board because the amended claims did not have adequate support in the specification. Failing the written description requirement of 35 USC § 112, ¶1, the motion was denied.
In the end, the Board’s first Final Written Decision contains few surprises. As has been the case in their decisions to institute, and other ancillary decisions, the Board undertook a thorough job of examining the merits, took unambiguous positions on those merits, and rendered a decision that is comprehensive and detailed. Next stop on this IPR ride: the Federal Circuit.