Federal Circuit in first ruling on PTAB decision
A US appeals court has ruled for the first time on a Patent and Trademark Appeal Board (PTAB) decision and has affirmed the board’s ruling that invalidated a patent.
In a 2-1 ruling issued yesterday, (February 4) the US Court of Appeals for the Federal Circuit affirmed the PTAB’s decision to invalidate US patent 6,778,074, which covers a “speedometer” and is held by Cuozzo Speed Technologies.
The patent was granted in 2004 and displays the speed of a vehicle in a white light indicator, which turns red when the car goes over the legal speed limit. The vehicle is tracked using a global position system (GPS).
But in 2012, GPS technology company Garmin International challenged the patent by requesting an inter partes review (IPR) at the PTAB.
In its decision, issued in November 2013, the PTAB agreed with Garmin’s argument that claims 10, 14 and 17 in the ‘074 patent were too obvious.
In the patent’s claims, Cuozzo said the GPS was “integrally attached” to the display showing the red and white light indicators, meaning the GPS and display should be defined as the same entity.
But the PTAB said the claims amount to “discrete parts physically joined together as a unit”, concluding that the GPS and display were separate entities.
Appealing against the decision, Cuozzo took exception to the PTAB’s method of analysing the claims, arguing that the board should have interpreted them in the same way as a district court—and not used the “broadest reasonable interpretation” approach.
In conventional litigation, courts take a narrower view of claims, looking at much more evidence such as prosecution history.
Despite the Federal Circuit affirming the PTAB’s method of assessing the patent’s claims, Judge Pauline Newman offered a dissenting opinion and agreed with Cuozzo’s challenge.
Michael Oblon, partner at law firm Perkins Coie in Washington, DC, said: “Judge Newman explained why the PTAB should apply the same canons of claim construction that are used by a district court. Clearly, if the PTAB continues to apply very broad constructions, it will continue to invalidate a large number of patents.”
Newman’s dissent opens up the possibility of an appeal, Oblon said, “which will probably lead to a re-hearing en banc if the patentee requests it”.
Cuozzo could not be reached for comment.
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