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
`
`Case:
`
`
`
`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
`
`____________
`
`
`PATENT OWNER’S REPLY BRIEF IN SUPPORT OF ITS MOTION FOR
`DISCOVERY AUTHORIZATION
`
`
`
`
`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
`
`Case:
`
`
`
`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
`
`____________
`
`
`PATENT OWNER’S REPLY BRIEF IN SUPPORT OF ITS MOTION FOR
`DISCOVERY AUTHORIZATION
`
`
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`Attorney’s Docket No.: CUO0001-RE
`Page 1
`
`The Scheduling Order Provides a Framework for Resolving Claim
`Construction Issues.
`
`
`
`
`
`
`In its opposition brief (Paper 22 at 1), Garmin acknowledges the need for
`
`resolving the threshold claim construction dispute over the meaning of “integrally
`
`attached.”1 Cuozzo Speed agrees. Cuozzo Speed disagrees, however, that the
`
`Board is tied to its initial decision that was based upon the incomplete and one-
`
`sided record Garmin presented in its petition.
`
`Garmin’s failure to state constructions in its petition as required under §
`
`42.104(b)(3) cannot preclude the Board’s consideration of claim construction
`
`issues now. Having passed on that opportunity, Garmin could have requested a
`
`rehearing of the Board’s decision on its petition. § 42.71. Garmin elected not to
`
`do that. Now, the IPR should proceed with Patent Owner’s response. The rules
`
`and the Board’s orders contemplate Cuozzo Speed’s response will address the
`
`claim construction issues (see Trial Practice Guide, 77 Fed. Reg. 48766 (Aug. 14,
`
`2012)), and Garmin is afforded a response (Scheduling Order, Paper 16 at 5). The
`
`IPR schedule already accommodates these issues.
`
`IPR Should Proceed on the Claims under Review.
`
`Contrary to Garmin’s suggestion, no justification exists for reopening the
`
`Board’s decision to review claims 10, 14, and 17. As the Board noted in its
`
`1 Garmin states, “The baseline requirement for nexus is that the claims are
`commensurate with and cover Garmin’s products, which necessarily implicates
`and requires deciding what is the correct claim construction for this IPR.”
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`Attorney’s Docket No.: CUO0001-RE
`Page 2
`
`Decision, Garmin failed to present a “reasonable basis to broaden out the
`
`
`
`
`
`
`interpretation of ‘integrally attached’ to cover the case of a single electronic
`
`display.” (Paper 15 at 8). In Patent Owner’s response, Cuozzo Speed will explain
`
`in detail why Garmin’s petition fails under any reasonable construction.
`
`The Board’s procedures cannot be blamed for potential “manifest injustice”
`
`caused by Garmin’s own strategy. Garmin petitioned for IPR, chose to take no
`
`position on claim construction, and chose not to request a rehearing of its petition
`
`after the Board issued its decision. If Garmin truly believes review of the claims
`
`not in this IPR is appropriate, the proper remedy to Garmin is to petition the Board
`
`to initiate another inter partes review or other process. Following the rules and
`
`procedures will not result in any injustice.
`
`Garmin Acknowledges a Nexus Exists Under Garmin’s Own
`Construction.
`
`Precluding limited and focused discovery based upon any claim construction
`
`is premature. As Cuozzo Speed points out in its motion, even under the Board’s
`
`construction, a nexus exists between the claims under review and Garmin’s
`
`Personal Navigation Devices (PNDs). The only basis upon which Garmin
`
`challenges the nexus (i.e., the only basis Garmin argues as to why the claims do
`
`not cover the Garmin PNDs) is the Board’s observation, based on the record
`
`presented by Garmin, that the speedometer and colored display cannot share an
`
`integrated display. This is an application of a claim construction to the device, not
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`Attorney’s Docket No.: CUO0001-RE
`Page 3
`
`a pure claim construction issue. Contrary to Garmin’s position, the Board need not
`
`
`
`
`
`
`determine the ultimate issue of infringement in order to decide the discovery issue.
`
`Under Cuozzo Speed’s proposed construction, a nexus exists, as evidenced
`
`by Garmin’s admission that Garmin’s devices provide a “single electronic display
`
`that itself operates both as a speedometer and a colored display.” Even under the
`
`Board’s construction, a nexus exists if the construction is applied to the Garmin
`
`PNDs because the speedometer in the PNDs includes more than just the LCD
`
`display. For example, Figure 1 of Garmin’s U.S. Pat. No. 8,258,978, which cites
`
`Cuozzo ’074 and is the subject of requested discovery, identifies separately the
`
`position determining module 112 (used for providing speed information, 4:12-15)
`
`and display device 120. In other words, the LCD display of the Garmin PNDs is part
`
`of the speedometer, but it does not constitute the speedometer.
`
`Garmin failed to make this distinction in its petition (and identified only a
`
`display as a speedometer in the alleged prior art), and consequently the Board found
`
`no reasonable basis to find a shared LCD display fell within the scope of the claims.
`
`But based upon Garmin’s own admission and the correct construction, the Garmin
`
`PNDs are within the scope of the claims and thus a nexus exists.
`
`Garmin initiated this IPR knowing routine discovery of its privies and efforts
`
`to commercialize embodiments of Cuozzo Speed’s patent would occur. They
`
`should be required to play by the rules and participate in the process.
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`Customer No. 67050
`Date: March 4, 2013
`
`Attorney’s Docket No.: CUO0001-RE
`Page 4
`
`
`Respectfully submitted,
`
`/John R. Kasha/
`John R. Kasha
`Reg. No. 53,100
`Attorney for the Patent Owner
`
`
`
`
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`
`
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`Page 5
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R § 1.550(f), a copy of the Patent Owner’s Reply
`Brief in Support of Its Motion for Discovery Authorization filed by Cuozzo Speed
`Technologies LLC on March 4, 2013, was duly served on the Inter Partes
`Requester via e-mail on March 4, 2013 to the following e-mail addresses:
`
`jbailey@hoveywilliams.com (Jennifer C. Bailey, Lead Counsel)
`sbrown@hoveywilliams.com (Scott R. Brown, Back-Up Counsel)
`jcrawford@hoveywilliams.com (Justin Crawford, Paralegal)
`
`
`Respectfully submitted,
`
`/John R. Kasha/
`Registration No. 53,100
`Attorney for Cuozzo Speed Technologies
`LLC
`
`
`
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
`Cabrach J. Connor
`Reed Scardino LLP
`301 Congress Ave. Ste. 1250
`Austin, Texas 78701
`(512) 615-5989
`(512) 474-2622 facsimile
`Email: cconnor@reedscardino.com
`
`David Skeels
`Friedman Suder & Cooke
`604 East 4th Street
`Suite 200
`Fort Worth, TX 76012
`Email: skeels@fsclaw.com
`
`
`
`
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