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18 November 2013

Garmin International succeeds under new USPTO method

The US Patent and Trademark Office has given its first decision under a new procedure, ruling that patent claims asserted against technology company Garmin International should be declared invalid.

In its review, the Patent Trial and Appeal Board (PTAB), issuing its first final written decision under the new inter partes review procedure, declared that claims asserted by Cuozzo Speed Technology were un-patentable.

Cuozzo, based in New Jersey, had previously filed a lawsuit alleging that Garmin’s personal navigation devices infringed its speedometer patent.

The lawsuit, filed at the US District Court for the District of New Jersey in June last year, accused Garmin of infringing US patent number 6,778,074, which provided a method for displaying a driver’s speed alongside the area’s speed limit.

It had previously asserted the patent against several other companies.

However, Garmin challenged the claims and sought a review in an attempt to cancel three of the patent’s claims.

The review, which became available on September 16 last year, was introduced as a result of the America Invents Act and allows a third party to challenge any claims of a patent.

After the final written decision by the PTAB, the petitioner is prohibited from filing a civil action, initiating proceedings before the International Trade Commission, or requesting a proceeding before the USPTO on any ground that was raised or could have been raised during the review.

Gramin challenged claims 10, 14 and 17 of the patent, which described satellite technology that could “continuously update” when speed is in violation of the limit with a coloured display system.

Issuing its ruling on Wednesday November 13, the USPTO ordered cancellation of the three claims, concluding that Cuozzo’s patent could not cover the technology employed by Garmin.

Rejecting the claims on the grounds of obviousness, the PTAB ruled that there were numerous examples of prior art spanning several decades, the combination of which made the invention obvious.

Mark Wine, partner at Orrick Herrington & Sutcliffe LLP in Irvine, California, said it was an important process which attorneys had “been watching carefully.”

“Because this was a bureaucratic process there was a lot of opportunity for delay but this seems to have been done in a timely fashion and within the time limit, which may send a message that, if the USPTO can conclude matters, litigation can be staved.”

Steve Auvil, partner and head of the IP and technology litigation practice at Squire Sanders LLP, in Cleveland, US said the embrace of “three and four-way obviousness arguments,” represented a warm invitation to challenge patents in the PTAB on obviousness grounds.

Auvil added there was “no doubt” the case would cause an increase in the number of inter partes review challenges.

“This decision will undoubtedly embolden accused infringers to lodge validity challenges in the PTAB,” Auvil said.

Kansas-based Garmin, famed for its range of satellite technologies, said it was pleased to be the first to receive results of a review.

Andrew Etkind, vice president and general counsel, said Gramin had a “long history” of fighting off “bogus patents.”

“The IPR process provides a quick and efficient method to kill invalid patents in contrast to the years of litigation required to reach the same conclusion through the federal courts,” Etkind said.

Either party is allowed to appeal an inter partes review decision.

“Efforts are ongoing to try and figure out a way to limit these kind of lawsuits [troll type],” said Wine, who added that, while it may deter smaller lesser-funded companies there were still others who would not be put off.

“There are company’s known as super trolls, which are well-funded and knowing them they will be prepared to meet all the procedures thrown at them.”

Auvil added that he expected Cuozzo to appeal the decision to the US Court of Appeals for the Federal Circuit, although he said it faces a “steep climb” to achieve a reversal of the decision.

“The options are to walk away or seek Federal Circuit review. The patent owner has several co-pending patent infringement suits, including suits against Garmin and TomTom,” Auvil said.

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