IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Trial Number: To Be Assigned
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`In the Inter Partes Review of:
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`U.S. Patent No. 6,778,074
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`Filed: March 18, 2002
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`Issued: August 17, 2004
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`Inventor(s): Cuozzo, Giuseppe A.
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`Assignee: Cuozzo Speed Technologies LLC
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`Title: SPEED LIMIT INDICATOR AND Panel: To Be Assigned
`METHOD FOR DISPLAYING
`SPEED AND THE RELEVANT
`SPEED LIMIT
`__________________________________________________________________
`Mail Stop Inter Partes Review
`Commissioner for Patents
`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
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`Attorney Docket No.: 1559.327
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`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .............................................1
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`TABLE OF CONTENTS
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`I.
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`A.
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`B.
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`C.
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`D.
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`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ...............................................1
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`Related Matters Under 37 C.F.R. § 42.8(b)(2) ........................................................1
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`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .....................................2
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`Service Information Under 37 C.F.R. § 42.8(b)(4) ..................................................2
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`II.
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`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ...........................................................3
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104 ........3
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`A.
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`B.
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`Grounds for Standing Under 37 C.F.R. § 42.104(a) ................................................3
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ....4
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`1.
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`Claims for Which Inter Partes Review Is Requested Under 37
`C.F.R. § 42.104(b)(1) ..................................................................................4
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`The Specific Art and Statutory Ground(s) on Which the Challenge Is
`Based Under 37 C.F.R. § 42.104(b)(2) .......................................................4
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`How the Challenged Claim(s) Are to Be Construed Under 37 C.F.R. §
`42.104(b)(3) ................................................................................................6
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`How the Construed Claim(s) Are Unpatentable Under 37 C.F.R. §
`42.104(b)(4) ................................................................................................7
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`Supporting Evidence Under 37 C.F.R. § 42.104(b)(5) ...............................7
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`2.
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`3.
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`4.
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`5.
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`IV.
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`SUMMARY OF THE ’074 PATENT .................................................................................8
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`V.
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`A.
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`B.
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`Description of the Alleged Invention of the ’074 Patent .........................................8
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`Summary of the Prosecution History of the ’074 Patent .........................................9
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`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE
`’074 PATENT IS UNPATENTABLE UNDER 37 C.F.R. § 42.104(b)(4) ......................11
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`Identification of the References as Prior Art .........................................................11
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`Summary of Invalidity Arguments ........................................................................13
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`ii 
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`A.
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`B.
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`VI. DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b) .....................................16
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`I.
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`J.
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`K.
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`L.
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`Claim 1 (Independent) ..........................................................................................16
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`Claim 2 (Dependent) .............................................................................................24
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`Claim 3 (Dependent) .............................................................................................25
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`Claim 4 (Dependent) .............................................................................................27
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`Claim 5 (Dependent) .............................................................................................28
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`Claim 6 (Dependent) .............................................................................................29
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`Claim 7 (Dependent) .............................................................................................30
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`Claim 8 (Dependent) .............................................................................................31
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`Claim 9 (Dependent) .............................................................................................33
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`Claim 10 (Independent) ........................................................................................34
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`Claim 11 (Dependent) ...........................................................................................41
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`Claim 12 (Dependent) ...........................................................................................43
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`M.
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`Claim 13 (Dependent) ...........................................................................................44
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`N.
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`O.
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`P.
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`Q.
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`R.
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`S.
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`T.
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`Claim 14 (Dependent) ...........................................................................................45
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`Claim 15 (Dependent) ...........................................................................................48
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`Claim 16 (Dependent) ...........................................................................................49
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`Claim 17 (Dependent) ...........................................................................................50
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`Claim 18 (Dependent) ...........................................................................................52
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`Claim 19 (Dependent) ...........................................................................................53
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`Claim 20 (Independent) ........................................................................................54
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`VII. CONCLUSION ..................................................................................................................60 
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`iii 
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`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
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`On behalf of Garmin International, Inc. (“Garmin”) and in accordance with 35
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`U.S.C. § 311 and 37 C.F.R. § 42.100, inter partes review is respectfully requested
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`for claims 1-20 of U.S. Patent No. 6,778,074 (“the ’074 Patent”).
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
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`As set forth below and pursuant to 37 C.F.R. § 42.8(a)(1), the following
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`mandatory notices are provided as part of this Petition.
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`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
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`Garmin International, Inc. and Garmin USA, Inc. are the real parties-in-
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`interest for Petitioner.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
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`The ’074 Patent is presently the subject of a patent infringement lawsuit
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`brought by the assignee, Cuozzo Speed Technologies LLC, against Garmin
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`International, Inc. and Garmin USA, Inc. and captioned Cuozzo Speed
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`Technologies LLC v. Garmin International Inc. et al., USDC District of New
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`Jersey, Case No.: 2:12-cv-03623-CCC-JAD. Petitioner also identifies the
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`following judicial proceedings that may affect, or be affected by, a decision in this
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`proceeding: (1) Cuozzo Speed Technologies LLC v. General Motors Company,
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`USDC District of New Jersey, Case No.: 2:12-cv-03624-CCC-JAD; (2) Cuozzo
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`1
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`

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`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
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`Speed Technologies LLC v. JVC Americas Corporation, USDC District of New
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`Jersey, Case No.: 2:12-cv-03625-CCC-JAD; and (3) Cuozzo Speed Technologies
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`LLC v. TomTom, Inc. et al., USDC District of New Jersey, Case No.: 2:12-cv-
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`03626-CCC-JAD.
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`
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`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
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`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioner provides the
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`following designation of counsel.
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`Lead Counsel
`Jennifer C. Bailey (Reg. No. 52,583)
`jcb@hoveywilliams.com
`Postal and Hand-Delivery Address:
`HOVEY WILLIAMS LLP
`10801 Mastin Boulevard, Suite 1000
`84 Corporate Woods
`Overland Park, Kansas 66210
`Telephone: (913) 647 – 9050
`Fax: (913) 647 – 9057
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
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`Back-Up Counsel
`Scott R. Brown (Reg. No. 40,535)
`srb@hoveywilliams.com
`Postal and Hand-Delivery Address:
`HOVEY WILLIAMS LLP
`10801 Mastin Boulevard, Suite 1000
`84 Corporate Woods
`Overland Park, Kansas 66210
`Telephone: (913) 647 – 9050
`Fax: (913) 647 – 9057
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`Petition.
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`Service Information Under 37 C.F.R. § 42.8(b)(4)
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`D.
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`Service information for lead and back-up counsel is provided in the
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`designation of lead and back-up counsel, above. Service of any documents via
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
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`hand-delivery may be made at the postal mailing address of the respective lead or
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`back-up counsel designated above.
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`II.
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`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
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`The undersigned authorizes the Office to charge $27,200.00 to Deposit
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`Account No. 19-0522 for the fee set forth in 37 C.F.R. § 42.15(a) for this Petition
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`for Inter Partes Review. Twenty claims are being reviewed, so no excess claim
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`fees are required. The undersigned further authorizes payment for any additional
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`fees that might be due in connection with this Petition to be charged to the above-
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`referenced Deposit Account.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104
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`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
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`
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`inter partes review of the ’074 Patent is satisfied.
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`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`Petitioner hereby certifies that the ’074 Patent is available for inter partes
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`review and that the Petitioner is not barred or estopped from requesting inter partes
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`review challenging the claims of the ’074 Patent on the grounds identified herein.
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`More particularly, Petitioner certifies that: (1) Petitioner is not the owner of the
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`’074 Patent; (2) Petitioner has not filed a civil action challenging the validity of a
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`3
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
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`claim of the ’074 Patent; (3) this Petition is filed less than one year after the date
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`on which the Petitioner, the Petitioner’s real party-in-interest, or a privy of the
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`Petitioner was served with a complaint alleging infringement of the ’074 Patent;
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`(4) the estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit this inter
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`partes review; and (5) this petition is filed after the later of (a) the date that is nine
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`months after the date of the grant of the ’074 Patent or (b) the date of termination
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`of any post-grant review of the ’074 Patent.
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`B.
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
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`The precise relief requested by Petitioner is that claims 1-20 of the ’074
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`
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`Patent are found unpatentable.
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`1.
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`Claims for Which Inter Partes Review Is Requested Under 37
`C.F.R. § 42.104(b)(1)
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`Petitioner requests inter partes review of claims 1-20 of U.S. Patent No.
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`6,778,074.
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`2.
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`The Specific Art and Statutory Ground(s) on Which the
`Challenge Is Based Under 37 C.F.R. § 42.104(b)(2)
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`Inter partes review of the ’074 Patent is requested in view of the following
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`
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`references: (1) U.S. Patent No. 6,633,811 to Aumayer (“Aumayer”); (2) DE 197 55
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`470 A1 to Tegethoff (“Tegethoff”); (3) U.S. Patent No. 5,375,043 to Tokunaga
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`4
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`

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`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
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`(“Tokunaga”); (4) JP H07-182598 to Hamamura (“Hamamura”); (5) U.S. Patent
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`No. 3,980,041 to Evans (“Evans”); (6) U.S. Patent No. 6,515,596 to Awada
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`(“Awada”); and (7) U.S. Patent No. 2,711,153 to Wendt (“Wendt”).
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`Each of the patents listed above is prior art to the ’074 Patent under
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`35 U.S.C. §§ 102(a), (b), and/or (e), as established in Section V(A), below.
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`Claim
`No.
`1
`1
`1
`2
`2
`3
`3
`4
`4
`5
`5
`6
`6
`7
`7
`8
`8
`9
`9
`10
`10
`10
`11
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`
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`Proposed Statutory Rejections
`for the ’074 Patent
`Claim 1 is anticipated under § 102(e) by Aumayer
`Claim 1 is anticipated under § 102(b) by Tegethoff
`Claim 1 is anticipated under § 102(b) by Tokunaga
`Claim 2 is anticipated under § 102(e) by Aumayer
`Claim 2 is anticipated under § 102(b) by Tegethoff
`Claim 3 is obvious under § 103(a) over Aumayer in view of Evans
`Claim 3 is obvious under § 103(a) over Tegethoff in view of Evans
`Claim 4 is obvious under § 103(a) over Aumayer in view of Evans
`Claim 4 is obvious under § 103(a) over Tegethoff in view of Evans
`Claim 5 is obvious under § 103(a) over Aumayer in view of Evans
`Claim 5 is obvious under § 103(a) over Tegethoff in view of Evans
`Claim 6 is anticipated under § 102(e) by Aumayer
`Claim 6 is anticipated under § 102(b) by Tegethoff
`Claim 7 is anticipated under § 102(e) by Aumayer
`Claim 7 is anticipated under § 102(b) by Tegethoff
`Claim 8 is anticipated under § 102(e) by Aumayer
`Claim 8 is obvious under § 103(a) over Tegethoff in view of Awada
`Claim 9 is anticipated under § 102(e) by Aumayer
`Claim 9 is obvious under § 103(a) over Tegethoff in view of Awada
`Claim 10 is anticipated under § 102(e) by Aumayer
`Claim 10 is obvious under § 103(a) over Tegethoff in view of Awada
`Claim 10 is obvious under § 103(a) over Tokunaga in view of Hamamura
`Claim 11 is anticipated under § 102(e) by Aumayer
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`
`5
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`
`Proposed Statutory Rejections
`for the ’074 Patent
`Claim 11 is obvious under § 103(a) over Tegethoff in view of Awada
`Claim 12 is anticipated under § 102(e) by Aumayer
`Claim 12 is obvious under § 103(a) over Tegethoff in view of Awada
`Claim 13 is anticipated under § 102(e) by Aumayer
`Claim 13 obvious under § 103(a) over Tegethoff in view of Awada
`Claim 14 is obvious under § 103(a) over Aumayer in view of Evans
`Claim 14 is obvious under § 103(a) over Tegethoff in view of Awada and
`further in view of Evans
`Claim 15 is obvious under § 103(a) over Aumayer in view of Evans
`Claim 15 is obvious under § 103(a) over Tegethoff in view of Awada and
`further in view of Evans
`Claim 16 is obvious under § 103(a) over Aumayer in view of Evans
`Claim 16 obvious under § 103(a) over Tegethoff in view of Awada and
`further in view of Evans
`Claim 17 is obvious under § 103(a) over Aumayer in view of Evans and
`further in view of Wendt
`Claim 17 is obvious under § 103(a) over Tegethoff in view of Awada and
`further in view of Evans and further in view of Wendt
`Claim 18 is anticipated under § 102(e) by Aumayer
`Claim 18 is obvious under § 103(a) over Tegethoff in view of Awada
`Claim 19 is anticipated under § 102(e) by Aumayer
`Claim 19 obvious under § 103(a) over Tegethoff in view of Awada
`Claim 20 is anticipated under § 102(e) by Aumayer
`Claim 20 obvious under § 103(a) over Tegethoff in view of Awada
`Claim 20 obvious under § 103(a) over Tokunaga in view of Hamamura
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`3. How the Challenged Claim(s) Are to Be Construed Under 37
`C.F.R. § 42.104(b)(3)
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`A claim subject to inter partes review receives the “broadest reasonable
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`Claim
`No.
`11
`12
`12
`13
`13
`14
`14
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`15
`15
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`16
`16
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`17
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`17
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`18
`18
`19
`19
`20
`20
`20
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`
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`construction in light of the specification of the patent in which it appears.” 42
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`6
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`

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`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
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`C.F.R. § 42.100(b). The Patent Owner has taken a very broad view of the meaning
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`of the claims based upon the allegations set forth in its complaint against the
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`products of the real parties in interest here. (See, Ex. 1014, pp. 8-9). The
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`“broadest reasonable construction” of the challenged claims must be consistent
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`with the allegations set forth in Patent Owner’s civil complaint. Petitioner submits,
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`for the purposes of the IPR only, that the claim terms are presumed to take on their
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`ordinary and customary meaning that the term would have to one of ordinary skill
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`in the art in view of Patent Owner’s civil complaint and the Specification of the
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`’074 Patent.
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`4. How the Construed Claim(s) Are Unpatentable Under 37
`C.F.R. § 42.104(b)(4)
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`An explanation of how construed claims 1-20 of the ’074 Patent are
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`unpatentable under
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`the statutory grounds
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`identified above,
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`including
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`the
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`identification of where each element of the claim is found in the prior art patents or
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`printed publications, is provided in Section VI, below, in the form of claims charts.
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`5.
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`Supporting Evidence Under 37 C.F.R. § 42.104(b)(5)
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`The exhibit numbers of the supporting evidence relied upon to support the
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`
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`challenge and the relevance of the evidence to the challenge raised, including
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`identifying specific portions of the evidence that support the challenge, are
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`7
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
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`provided in Section VI, below, in the form of claim charts. An Appendix of
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`Exhibits identifying the exhibits is also attached. Pursuant to 37 C.F.R. § 42.63(b),
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`Exhibits 1004 and 1008 are Affidavits of Joyce Chen attesting to the accuracy of
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`the translations of Exhibits 1002 and 1006.
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`IV. SUMMARY OF THE ’074 PATENT
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`A. Description of the Alleged Invention of the ’074 Patent
`
`The ’074 Patent discloses a speed limit indicator for determining the speed
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`
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`of a vehicle, the speed limit corresponding to the vehicle’s current location, and
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`displaying the speed and speed limit to the driver. (’074 Patent, Abstract). A
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`speedometer 12 mounted on a dashboard 26 displays the speed limit 10. (Col. 5, ll.
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`6-9). The speedometer 12 has a backplate 14, speed denoting markings 16 painted
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`on the backplate 14, a needle 20 rotatably mounted in the center of backplate 14,
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`and “a colored display 18 made of a red plastic filter.” (Col. 5, ll. 9-11).
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`
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`To obtain speed limit information, uploading unit 38 “uploads current data
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`to a regional speed limit database 40.” (Col. 5, ll. 25-26). A global positioning
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`receiver 22 determines the vehicle location and “identifies the relevant speed limit
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`from the database for that location.” (Col. 5, ll. 27-29). The GPS receiver
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`“compares the vehicle’s speed and the relevant speed limit 44, and uses a tone
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`
`
`
`
`8
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`generator 46 to generate a tone in the event that the vehicle’s speed exceeds the
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`relevant speed limit.” (Col. 5, ll. 29-33).
`
`
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`The colored display 8 is adjusted via a control unit “so that the speeds above
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`the legal speed limit are displayed in red 50 while the legal speeds are displayed in
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`white 52. This is accomplished by the control unit rotating the red filter disc 54 to
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`the appropriate degree.” (Col. 5, ll. 35-39). Thus, the red-colored filter 18 rotates
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`according to the uploaded speed limit information. The ’074 Patent further briefly
`
`states that “the colored display herein described could also take the form of a liquid
`
`crystal display.” (Col. 6, ll. 12-14).
`
`B.
`
`Summary of the Prosecution History of the ’074 Patent
`
`The ’074 Patent was filed March 18, 2002, and issued August 17, 2004, with
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`
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`20 claims, of which claims 1, 10, and 20 are independent. The ’074 Patent as filed
`
`included claims 1-20, of which claims 1, 11, and 20 were independent.
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`
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`A non-final Office Action was mailed on October 3, 2003, and rejected
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`claims 1-3, 7-14, 18, 19, and 20 under 35 U.S.C. § 102(e) as being anticipated by
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`U.S. Patent No. 6,515,696 to Awada (“Awada”); claims 3, 4, 7, 14, 15, and 18
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`under 35 U.S.C. § 103(a) as being obvious over Awada; and claims 5, 6, 16, and
`
`
`
`
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`17 under 35 U.S.C. § 103(a) as being obvious over Awada in view of U.S. Patent
`
`No. 4,935,850 to Smith, Jr. (“Smith”).
`
`
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`Responsive to the non-final Office Action, an Amendment was filed on
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`November 9, 2003, that contained a formatting error. On January 9, 2004, a
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`supplemental amendment (the “Corrected Amendment”) was filed that amended
`
`claims 1, 3-12, and 14-20, canceled claims 2 and 13, and added claims 21 and 22.
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`(Ex. 1013, pp. 2-5). The Patent Owner argued that amended independent claim 1
`
`was not anticipated by Awada because:
`
`Awada (6,515,596) lacks a speedometer integrally attached to the
`speed limit display (column 2, lines 40-42 and Figs. 1 and 4-6). The
`vehicle’s driver is forced to look in two separate locations and then
`mentally compare the speed limit with his vehicle’s speed to
`determine how close he is to speeding if he is not already doing so
`sufficiently to activate the light and/or tone. This significant
`complexity could be distracting to the driver, thereby increasing the
`risk of an accident. In contrast, the present invention provides an
`integrated display allowing the driver to immediately ascertain both
`his speed and its relation to the prevailing speed limit.
`
`
`Id. at p. 6. (emphasis added). Thus, the Patent Owner overcame Awada by
`
`arguing that the speed limit and the current speed were displayed in close
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`
`
`
`
`10
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`proximity or relation to each other so the driver does not have to look in two
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`different places on the dashboard and further so the driver can see how close he is
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`to speeding (i.e., the relative difference between the speed and the speed limit).
`
`
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`The Patent Owner further commented on the independent adjustment of the
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`colored display with respect to the speedometer. In arguing over Smith, the Patent
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`Owner noted that Smith’s interrupter plate “rotates in conjunction with the
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`speedometer needle axis,” whereas “the colored display of the present invention
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`adjusts independently of the speedometer by rotation of a colored filter by the
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`display controller.” Id. at p. 7.
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`
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`A Notice of Allowance dated February 18, 2004, was mailed in response to
`
`the Corrected Amendment and identified claims 1, 3-12, and 14-22 as allowable.
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`No comments on allowance were provided by the Examiner. The ’074 Patent
`
`issued on August 17, 2004.
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’074 PATENT IS UNPATENTABLE UNDER 37
`C.F.R. § 42.104(b)(4)
`
`A.
`
`Identification of the References as Prior Art
`
`
`
`
`U.S. Patent No. 6,633,811 to Aumayer was filed October 19, 2000, and
`
`issued October 14, 2003. Aumayer claims priority to German Patent Application
`
`
`
`
`
`11
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`No. 199 50 156, filed October 19, 1999. Therefore, Aumayer is prior art to the
`
`’074 Patent under 35 U.S.C. § 102(e).
`
`
`
`German Patent No. DE 197 55470 A1 to Tegethoff was filed December 3,
`
`1997, and issued September 24, 1998. Therefore, Tegethoff is prior art to the ’074
`
`Patent under 35 U.S.C. § 102(b).
`
`
`
`U.S. Patent No. 5,375,043 to Tokunaga was filed July 6, 1992, and issued
`
`December 20, 1994. Tokunaga claims priority to Japanese Patent Application No.
`
`4-218815 filed July 27, 1992. Therefore, Tokunaga is prior art to the ’074 Patent
`
`under 35 U.S.C. § 102(b).
`
`
`
`Japanese Patent Application Publication No. H07-182598 to Hamamura was
`
`filed March 9, 1994, and published July 21, 1995. Therefore, Hamamura is prior
`
`art to the ’074 Patent under 35 U.S.C. § 102(b).
`
`
`
`U.S. Patent No. 3,980,041 to Evans was filed October 22, 1974, and issued
`
`September 14, 1976. Therefore, Evans is prior art to the ’074 Patent under 35
`
`U.S.C. § 102(b).
`
`
`
`U.S. Patent No. 2,711,153 to Wendt was filed September 11, 1951, and
`
`issued June 21, 1955. Therefore, Wendt is prior art to the ’074 Patent under 35
`
`U.S.C. § 102(b).
`
`
`
`
`
`12
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`
`
`None of Aumayer, Tegethoff, Tokunaga, Hamamura, Evans, or Wendt was
`
`of record during prosecution of the ’074 Patent, and none was relied upon in any
`
`rejection of the claims.
`
`
`
`U.S. Patent No. 6,515,596 to Awada was filed March 8, 2001, and issued
`
`February 4, 2003. Therefore, Awada is prior art to the ’074 Patent under 35 U.S.C.
`
`§ 102(e). Awada was cited during prosecution of the ’074 Patent and was relied
`
`upon as a basis for a rejection.
`
`B.
`
`Summary of Invalidity Arguments
`
`Vehicle speedometers with speed limit alerts have been known for decades.
`
`
`
`Some of these speedometers even used GPS to determine the relevant speed limit.
`
`This prior art was not before the Patent office during examination of the ’074
`
`Patent. The key feature that resulted in allowance of the ’074 Patent is displaying
`
`vehicle speed in close physical proximity to the speed limit corresponding to the
`
`vehicle’s current location—i.e., a vehicle speedometer that can display a speed
`
`limit indicator. (See, Ex. 1013, pp. 6-7). The prior art Awada reference (Ex. 1010)
`
`cited during prosecution disclosed determining the speed limit corresponding to the
`
`vehicle’s location and displaying the speed limit on the dashboard of the vehicle,
`
`as shown in the below Fig. 1 from Awada:
`
`
`
`
`
`13
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`
`
`
`
`
`The cited prior art allegedly did not disclose, however, displaying vehicle speed in
`
`close physical proximity to the speed limit so that the driver can “immediately
`
`ascertain both his speed and its relation to the prevailing speed limit.” (Ex. 1013,
`
`p. 6).
`
`
`
`Petitioner cites herein several prior art references that teach displaying the
`
`speed limit and the vehicle’s current speed in close physical proximity to each
`
`other. Notably, several of the prior art references provide a pointer or tick mark on
`
`the speedometer scale that specifically identifies the speed limit for the vehicle’s
`
`current location. For example, Aumayer (Ex. 1001) and Tegethoff (Ex. 1003) both
`
`teach a red-colored tick mark on the speedometer scale that identifies the speed
`
`limit for the vehicle’s current location as determined by a GPS (Aumayer) or an
`
`element for navigation (Tegethoff). Evans (Ex. 1009) discloses a red-colored filter
`
`very similar to the colored display of the ’074 Patent for identifying a speed limit.
`
`Wendt (Ex. 1011) teaches a speedometer with a speed limit indicator in the form of
`
`a rotating needle that may be manually set to the relevant speed limit. Thus,
`
`
`
`
`14
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`speedometers that can denote the speed limit in close proximity to the current
`
`speed of the vehicle, so that the driver can immediately ascertain his or her speed
`
`and its relation to the speed limit, have been well known in the art for many years.
`
`
`
`The prior art cited herein identifies and solves the same problem allegedly
`
`solved by the alleged invention of the ’074 Patent. For example, Tegethoff notes
`
`that its LCD speedometer, which illuminates red when the speed limit is exceeded,
`
`allows “connections between different driving parameters [to be] clarified to the
`
`driver in a very clear and intuitively comprehensible manner.” (Ex. 1003, p. 3, col.
`
`1). For speed limit indicators presented by the LCD speedometer, “[t]he driver
`
`does not hereby need to make any abstraction effort (reading two separate
`
`instruments).” (Ex. 1003, p. 9, col. 1). Evans, which teaches a red-colored filter
`
`attached to the speedometer to identify the speed limit, states that “[t]he driver only
`
`need glance at the dial while driving, with the indicator in place on the dial, and
`
`tell whether the speed limit is being exceeded or not, i.e. whether the speedometer
`
`needle is in or out of the warning area of the dial, as defined by the indicator plate.
`
`Sharp, accurate and swift reference to the dial can thus be made . . . .” (Ex. 1009,
`
`col. 2, ll. 9-16). This is exactly the reasoning argued by the Patent Owner for
`
`obtaining allowance of the ’074 Patent.
`
`
`
`
`
`15
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`VI. DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b)
`
`A. Claim 1 (Independent)
`
`Claim 1
`A speed limit
`indicator
`comprising:
`
`Anticipated By Aumayer (Ex. 1001)
`Aumayer discloses a “speed display device 101.” (Col. 5, l.
`19). “[S]peed limits at the current location [of the vehicle]
`may be displayed on the speed scale itself by highlighting an
`appropriate scale mark or producing a scale mark of a
`different length or color.” (Abstract).
`Aumayer generally discloses “at least one maximum speed
`[being] displayed in the display device, which is the speed
`limit for a particular type of street or road . . . .” (Col. 5, ll. 1-
`4). In particular, Aumayer discloses a speed display device
`101 including a speedometer. (See, Fig. 2a; col. 5, ll. 19-20).
`The display device 101 includes a first scale 103 with scale
`values 104 and first scale marks 106. (Col. 5, ll. 20-22). The
`display device also includes a “second scale mark 107, which
`displays the maximum speed.” (Col. 5, l. 25-30). “A first
`maximum speed or speed limit symbol 105 is also displayed
`on the display device 101. A driver of the vehicle is informed
`of the speed limit of 50 km/hr both by the second scale mark
`107 and by a first speed limit symbol 105.” (Col. 5, ll. 37-
`41).
`
`a colored display
`to delineate which
`speed readings are
`in violation of the
`speed limit at a
`vehicle's current
`location;
`
`
`
`Aumayer further discloses highlighting the speed limit: “A
`second scale mark 107 is especially emphasized by making it
`longer and wider than the first scale marks 106. Furthermore
`for that purpose the scale mark 107 can be in a different
`color, for example red, yellow or orange, from the color of
`
`
`
`
`16
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`
`the scale marks 106, which e.g. can be white, as the sole
`emphasizing means or as a highlighting means.” (Col. 5, ll.
`25-31).
`
`Aumayer discloses that the speed limit indicated by the
`second scale mark 107 is specific to a particular location for
`the vehicle: “Finally the region in which the vehicle is
`located is determined from the position of the vehicle located
`on the digital map in a region-determining step 13. Then the
`particular physical units for speed values and speed limits for
`that region are retrieved or otherwise obtained.” (Col. 4, ll.
`48-53; see also, col. 2, ll. 18-21; col. 7, ll. 21-26; col. 4, ll.
`42-44: “[A] GPS locating device and/or a composition
`navigate device determines the geographic position of the
`vehicle . . . .”).
`
`Thus, Aumayer’s colored second scale mark 107 is a colored
`display, namely a red-colored tick mark on the speedometer
`scale, that delineates speed readings in violation of the speed
`limit at a vehicle’s current location, i.e., all speeds after the
`second scale mark 107 on the speedometer scale are in
`violation of the speed limit.
`Aumayer discloses the “speed display device 101 in a motor
`vehicle including a speedometer is shown in Fig. 2a.” (Col.
`5, ll. 19-20; see also, Fig. 2a). Fig. 3 of Aumayer discloses
`the hardware associated with the speed display device 101. In
`Fig. 3, a display device 211 includes a “display medium, for
`example a display screen provided by a liquid crystal display
`device, a plasma screen or a cathode ray tube. The
`embodiments with the display screen permit a very simple
`change of the display by means of the method according to
`the invention, since the display device 211 only needs to
`show a different image in the display screen.” (Col. 7, ll. 34-
`37).
`
`Because the display device 211 is, for example, an LCD
`
`
`a speedometer
`integrally attached
`to said colored
`display;
`
`
`
`17
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,778,074
`Filed September 16, 2012
`
`
`screen that displays both the speedometer and the colored
`second scale mark 107, the speedometer is integrally attached
`to the colored display, namely the colored second scale mark
`107.1
`
`Additionally, Aumayer notes that mechanical elements may
`also be used for the display device 211: “Furthermore it is
`also possible to use a commercial combined apparatus with
`mechanical display elements for the display device 211. The
`control of the pointer 102 must then be adj