`
`Case:
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`PATENT
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
`
`Patent of CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`____________
`
`
`
`
`IPR2012-00001
`
`Patent No.:
`
`6,778,074
`
`
`
`
`
`
`
`Filed:
`
`Issued:
`
`Inventors:
`
`Title:
`
`March 18, 2002
`
`August 17, 2004
`
`Giuseppe A. Cuozzo
`
`Speed Limit Indicator and Method for Displaying Speed and
`the Relevant Speed Limit
`
`Docket No.:
`
`CUO0001-RE
`
`____________
`
`DECLARATION OF JAMES H. MORRIS PURSUANT TO 37 C.F.R. § 1.132
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`
`
`1
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`
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`
`
`Dear Sir:
`
`
`
`I, James H. Morris, declare as follows:
`
`1. I have been retained as a technical expert on behalf of Cuozzo Speed
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`Technologies LLC (hereinafter the “Patent Owner”) for the above-captioned
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`Inter Partes Review (hereinafter the “IPR”). I understand that this IPR
`
`involves U.S. Patent No. 6,778,074 (hereinafter the “‘074 patent”), which
`
`resulted from Application No. 10/100,378 (hereinafter the “‘378
`
`application”), filed on March 18, 2002 on behalf of Giuseppe A. Cuozzo. I
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`further understand that the ‘074 patent is assigned to the Patent Owner.
`
`2. I have studied human computer interaction extensively. I was the Herbert A.
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`Simon Professor of Human Computer Interaction at Carnegie Mellon
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`University from 1997 to 2000, and I was the Principal Investigator for a
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`DARPA grant on Human Computer Interaction from 1993 to 1996. I
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`founded MAYA Design, Inc., a nationally recognized consulting firm
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`specializing in man machine interaction since 1990. There I analyzed,
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`improved, and invented several products. I founded the Human Computer
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`Interaction Institute at Carnegie Mellon University where I continue to
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`participate in research on the same topic.
`
`3. I have reviewed the Decision to Initiate Trial for Inter Partes Review
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`(hereinafter the “Order”) dated January 9, 2013. I understand that only
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`
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`2
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`
`
`
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`claims 10, 14, and 17 are subject to the IPR. Claim 10 is the only
`
`independent claim.
`
`4. I have reviewed the ‘074 patent. I have also reviewed the substitute
`
`amendment (hereinafter the “Amendment”) filed on January 9, 2004 during
`
`the prosecution of the ‘378 application that describes why the word
`
`“integrally” was added to claim 10.
`
`5. I have reviewed U.S. Patent No. 6,515,596 (hereinafter the “‘596 patent”),
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`issued on February 4, 2003 to Faisal M Awada.
`
`6. I am familiar with the rules of claim interpretation.
`
`7. I have been asked to provide my opinion regarding whether there is a
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`reasonable basis to interpret “integrally attached” to cover the case of a
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`single electronic display that itself operates both as a speedometer and a
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`colored display. For the reasons set forth below, it is my opinion that there
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`is a reasonable basis to broaden the interpretation of “integrally attached” in
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`claim 10 to cover the case of a single electronic display that itself operates
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`both as a speedometer and a colored display.
`
`I. QUALIFICATIONS
`
`8. I earned a Bachelor of Science degree in Mathematics in 1963 from
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`Carnegie Institute of Technology and a Master of Science degree in
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`
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`3
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`
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`
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`
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`Management in 1966 from MIT. I then earned a doctoral degree in
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`Computer Science in 1969 from MIT.
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`9. I am currently a Professor in the Computer Science Department of Carnegie
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`Mellon University. I have been on the CMU faculty since 1988. From
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`2004-2009 I was Dean of the Silicon Valley Campus, from 1999-2004 I was
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`Dean of the School of Computer Science, and from 1992-1999 I was the
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`Computer Science Department Head.
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`10. From 1982 to 1987 I was the Director of the Information Technology Center
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`at CMU, where I built and ran a 40-person organization that implemented
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`the Andrew system.
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`11. From 1989 to 1992 I was also president of MAYA Design Group, Inc., a
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`consulting company specializing in the design of computing systems for
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`general use.
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`12. From 1974 to 1982 I was employed by Xerox’s Palo Alto Research Center
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`in a variety of positions including Member of the Research Staff, Principle
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`Scientist and Research Fellow.
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`13. From 1969 to 1974 I was a member of the faculty at the University of
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`California at Berkeley. I was an Assistant Professor in the Computer
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`Science Department.
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`4
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`
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`14. I am being compensated for my work on this declaration and my
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`participation in this IPR. My compensation is not dependent on the outcome
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`of this IPR.
`
`II. My Understanding of Claim Interpretation:
`
`15. I am familiar with the following rules of claim construction set forth by the
`
`Board. I understand that:
`
`the Board interprets claim terms by applying the broadest
`reasonable construction in the context of the specification in
`which the claims reside. 37 C.F.R. § 42.100(b); see Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012).
`
`[the Board gives] claim terms their ordinary and accustomed
`meaning as would be understood by one of ordinary skill in the
`art. Phillips v. AWH Corp., 415 F.3d 1303, 1326 (Fed. Cir.
`2005)(en banc). That ordinary and accustomed meaning applies
`unless the inventor as a lexicographer has set forth a special
`meaning for a term. Multiform Desiccants, Inc. v. Medzam, Ltd.,
`133 F.3d 1473, 1477 (Fed. Cir. 1998); York Prods., Inc. v. Central
`Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996).
`When an inventor acts as a lexicographer, the definition must be
`set forth with reasonable clarity, deliberateness, and precision.
`Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998).
`
`
`
`5
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`
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`[the Board] need not rely on a feature to give meaning to what the
`inventor means by a claim term, that feature would be
`“extraneous” and should not be read into the claim. Renishaw
`PLC, 158 F.3d at 1249. The construction that stays true to the
`claim language and most naturally aligns with the inventor’s
`description is likely the correct interpretation. See Id., 158 F.3d at
`1254.
`
`In some cases, the ordinary meaning of claim language as
`understood by a person of skill in the art may be readily apparent
`even to lay judges, and claim construction in such cases involves
`little more than the application of the widely accepted meaning of
`commonly understood words. Phillips v. AWH Corp., 415 F.3d at
`1314.
`
`Decision, pages 3-4.
`
`III. Board’s Interpretation of “Integrally Attached” in Claim 10 of the‘074
`
`Patent
`
`16. I understand that the Board interpreted “integrally attached” to mean that
`
`the two elements [speedometer and colored display] are discrete
`parts physically joined together as a unit without each part losing
`its own separate identity. Decision, page 8.
`
`17. I understand that the Board looked to col. 5, lines 9-12 of the ‘074 patent
`
`that states that the
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`6
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`
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`“[s]peedometer 12 has a backplate 14 made of plastic, speed
`denoting markings 16 painted on backplate 14, a colored display
`18 made of a red plastic filter, and a plastic needle 20 rotatably
`mounted in the center of backplate 14.
`
`and page 6 of the Amendment that states that
`
`Support for the amendment to specify that the speedometer is
`integrally attached to the colored display is found in the
`specification at p.7, lines 28-30, p.8, lines 21-23, and in Fig. 1, 3,
`and 4
`
`to support the Boards interpretation of “intergrally attached.”
`
`18. I understand that in the Decision the Board found that:
`
`Petitioner has not presented a reasonable basis to broaden out the
`interpretation of “integrally attached” to cover the case of a single
`electronic display that itself operates both as a speedometer and a
`colored display. (Decision, page 8)
`
`III. “Integrally Attached” Can Cover a Single Electronic Display
`
`19. In regard to the specification, an electronic display in the form of a liquid
`
`crystal display (hereinafter the “LCD’) is described in only two passages of
`
`the ‘074 patent. Col. 3, lines 4-6 of the ‘074 patent recite that
`
`The invention may also include a color display comprising the
`speed limit indicator which may take the form of a colored filter
`or a liquid crystal display.
`
`
`
`7
`
`
`
`
`
`and col. 6, lines 10-14 of the ‘074 patent recite that
`
`And although a red filter disc has been described, it should be
`appreciated that the colored display herein described could also
`take the form of a liquid crystal display.
`
`20. It is my opinion that the specification supports a colored display that is an
`
`electronic display in the form of an LCD.
`
`21. In regard to the claims, confirmed claim 12 of the ‘074 patent recites
`
`The speed limit indicator as defined in claim 10, wherein said
`colored display is a liquid crystal display.
`
`
`
`and confirmed claim 18 of the ‘074 patent recites
`
`The speed limit indicator as defined in claim 10, wherein said
`speedometer comprises a liquid crystal display.
`
`22. It is my opinion, therefore, that confirmed claims 12 and 18 provide a
`
`reasonable basis for finding an embodiment of the invention where the
`
`speedometer and the colored display of claim 10 are integrally attached so
`
`that the speedometer includes the LCD and the LCD is the colored display.
`
`In other words, the speedometer has a colored display that is an LCD.
`
`23. It is my opinion that because confirmed claims 12 and 18 support an
`
`embodiment of claim 10 where the speedometer has a colored display that is
`
`an LCD, one skilled in the art at the time of the invention would have
`
`reasonably thought that that embodiment included displaying both the speed
`8
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`
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`and the speed limit on that display. In other words, one skilled in the art at
`
`the time of the invention would find it reasonable to display the speed on the
`
`LCD in addition to the speed limit in order to provide a speedometer that is
`
`less expensive and easier to produce.
`
`24. It is further my opinion that one skilled in the art at the time of the invention
`
`would not find it reasonable to limit the embodiment of claim 10 where the
`
`speedometer has a colored display that is an LCD to a system where the
`
`speed is displayed mechanically and the speed limit is displayed
`
`electronically.
`
`25. I have considered how a mechanical embodiment might be modified to
`
`include an LCD according the Board’s interpretation of “integrally
`
`attached.”
`
`26. The Board relied upon col. 5, lines 9-12 of the ‘074 patent in fashioning its
`
`interpretation of “integrally attached.” These lines refer to Fig. 1 of the ‘074
`
`patent. Fig. 3 of the ‘074 patent shows a mechanical embodiment of the
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`display shown in Fig. 1. Construing col. 5, lines 9-12 of the ‘074 patent in
`
`conjunction with Figs. 1 and 3 of the ‘074 patent, suggests a mechanical
`
`solution where that the colored display 18 is in the form of a solid red plastic
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`filter. In this mechanical solution, a region of speeds above the speed limit
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`is displayed by rotating the solid red plastic filter along the same axis as
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`9
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`plastic needle 20 of the speedometer relative to speed denoting markings 16
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`painted on backplate 14.
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`27. Confirmed claim 12 and col. 3, lines 4-6 and col. 6, lines 10-14 of the ‘074
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`patent suggest that the solid red plastic filter of colored display 18 can take
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`the form of an LCD. It is my opinion that one skilled in the art at the time of
`
`the invention would not interpret claim 12 and these lines to mean that the
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`solid red plastic filter is simply replaced with an LCD in the mechanical
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`solution. In other words, an LCD would not be rotatably mounted on a
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`speedometer axle.
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`28. An LCD is robust device capable of displaying graphics and movement of
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`those graphics on its own. It is also capable of displaying information from
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`two or more separate components. It is my opinion that it would be natural
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`for one skilled in the art at the time of the invention to combine the
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`speedometer readout with the speed limit information on the LCD. In the
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`mechanical solution, the solid red plastic filter highlights a region of speeds
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`above the speed limit by rotating relative to speed denoting markings that
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`are part of the speedometer. As a result, even in the mechanical solution,
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`information from the speedometer and the colored display is combined to
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`display the speed limit.
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`10
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`29. It is my opinion that the mention of an LCD in confirmed claims 12 and 18
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`and col. 3, lines 4-6 and col. 6, lines 10-14 of the ‘074 implies that there is
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`an electronic embodiment to one skilled in the art at the time of the
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`invention. Such an electronic solution reduces the number of parts needed
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`and lowers the overall cost of the system.
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`30. In fashioning its interpretation of “integrally attached,” the Board also
`
`looked to the Amendment filed during the prosecution of the ‘378
`
`application. In that amendment, the adverb “integrally” was added to
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`modify the verb “attached” in claim 10. The Amendment on page 6
`
`provides the following rationale for adding the adverb “integrally” to the
`
`verb “attached.”
`
`The cited 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.
`
`11
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`31. It is my opinion, therefore, that it is reasonable to assume that the inventor
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`added the adverb “integrally” to the verb “attached” in claim 10 to limit
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`embodiments of the invention to a speedometer and colored display attached
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`so that the attachment provides an integrated display that displays the speed
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`and speed limit in the same location. The Amendment says that the adverb
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`“integrally” was added to claim 10 to distinguish claim 10 from the ‘596
`
`patent. In addition, the Amendment explicitly states that the difference
`
`between the ‘074 patent and the ‘596 patent is that the ‘074 patent “provides
`
`an integrated display allowing the driver to immediately ascertain both his
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`speed and its relation to the prevailing speed limit.” (Emphasis added.)
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`32. In summary, it is my opinion that confirmed claims 12 and 18, col. 3, lines
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`4-6 and col. 6, lines 10-14 of the ‘074 patent provide a reasonable basis for
`
`finding that the attachment of the speedometer and the colored display of
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`claim 10 includes an electronic display in the form of an LCD. It is further
`
`my opinion that the Amendment provides a reasonable basis for finding that
`
`the inventor added the term “integrally” to claim 10 to limit the attachment
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`to an integrated display that displays the speed and speed limit in the same
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`location. Therefore, it is my opinion that there is a reasonable basis to
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`broaden out the interpretation of “integrally attached” in claim 10 to cover
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`12
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`
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`the case of a single electronic display that itself operates both as a
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`speedometer and a colored display.
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`33. I hereby declare under penalty of perjury of the laws of the United States
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`that to the best of my knowledge and belief the foregoing is true and correct.
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`Date: February 21, 2013
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`James H. Morris, Ph.D
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`13
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