First oral hearing in inter partes review: Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC

The first oral hearing for an inter partes review under AIA was held on August 16, 2013.  The matter is IPR2012-00001 (Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC).  Relying on the Board’s previous construction of the Patent Owner’s claim term “integrally attached,” as used in the claim phrase “a speedometer integrally attached to said colored display,” the Petitioner Garmin proposed several combinations of purported prior art, arguing that various combinations rendered the Patent Owner’s patent invalid.  In response, the Patent Owner Cuozzo argued that the prior art was deficient for several reasons.  The Patent Owner also argued that two prior art documents were inappropriate due to Patent Owner’s diligence from conception to reduction to practice.

While the Petitioner was allowed to present its presentation nearly without interruption, the Patent Owner was questioned at length by the Board.  When the Patent Owner argued that features in the claims were absent from the prior art, the Board asked pointed questions about their purported absence and then turned the discussion to an “obvious to try” analysis.  The discussion then progressed to new claims that the Patent Owner introduced in the IPR.  In that topic, the discussion ranged widely over whether the claims had original written description support, whether the claims were inherent or implicit from the original application, and whether the claims were consistent with the Board’s construction of “integrally attached.” It is not clear why the phrase “integrally attached” was analyzed in this detail when the phrase did not exist in the new claim.

In general, it appeared that the Board was giving little, if any weight to arguments from the Patent Owner, which is consistent with the tone in the Board’s earlier decision to grant review.  As is expected after the Board granted the petition of review, the Patent Owner has a steep uphill battle.
(Thanks to John Fischer for this posting)

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