First IPR Ruling Deals Blow to Empire IP Entity
On November 13, 2013, the USPTO Patent Trial and Appeal Board (PTAB) issued its first ruling under the new standards for inter partes review (IPR) set up by the America Invents Act. The PTAB granted Garmin’s request to cancel three claims of patent No. 6,778,074 as obvious in light of prior art. Cuozzo Speed Technologies, an Empire IP subsidiary, asserted the ‘074 patent against Garmin in New Jersey district court on June 15, 2012, alleging that Garmin’s navigation systems infringe the patent’s claims directed towards the use of GPS-based speed limit indicators. Garmin filed its petition for inter partes review on the first day such AIA filings were allowed, in September 2012, which was granted by the PTAB in January 2013 in regards to independent claim 10 and dependent claims 14 and 17. In its inter partes decision, the PTAB first construed the claims and then found that Garmin had met its burden of proof by a preponderance of the evidence that the three claims at issue were unpatentable under 35 U.S.C. § 103 as obvious based on a combination of 4 references. In doing so, the PTAB denied Cuozzo’s motion to amend the ‘074 patent’s claims, as well as its arguments relating to prior conception and due diligence. However, the PTAB did not consider independent claim 1, and the infringement lawsuits between Cuozzo and Garmin, General Motors, Tom Tom, and JVC Americas remain ongoing in the New Jersey district court.