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
`
`____________
`
`Case IPR2012-00001
`Patent 6,778,074
`
`____________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
`
` 
`
`
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`

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`TABLE OF CONTENTS
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`
`I.  The Proposed Substitute Claims Improperly Enlarge the Scope of the
` Original Claims and Introduce New Matter ........................................................ 1
` 
`
`A. Claims 21 and 22 Improperly Enlarge and Lack Support ............................ 1
`
` 
`II.  Garmin’s Citation of Nagoshi and Vaughn Are Directly Responsive to New
` Issues Arising from the Proposed Substitute Claims .......................................... 6
` 
`III.  Substitute Claims 21–23 Are Obvious Over Nagoshi in View of Vaughn ......... 7
` 
`IV. Claims 21–23 Are Also Obvious in View of Garmin’s Original References
` Combined with Vaughn and Nagoshi ................................................................ 14
` 
`V.  Conclusion ......................................................................................................... 15 
`
`B.    Claim 23 Improperly Enlarges and Lacks Support ....................................... 2
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`Case No.: IPR2012-00001
`Patent No.: 6,778,074 
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`TABLE OF AUTHORITIES
`
`Cases
`
` 
`Honeywell Int’l, Inc. v. ITT Indus., Inc.
` 452 F.3d 1312 (Fed. Cir. 2006) .............................................................................. 5
` 
`Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., et al.
` 485 F.3d 1157 (Fed. Cir. 2007) .............................................................................. 9
` 
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.
` 298 F.3d 1290 (Fed. Cir. 2002) .............................................................................. 2
` 
`Quantum Corp. v. Rodime, PLC
` 65 F.3d 1577 (Fed. Cir. 1995) ................................................................................ 2
` 
`Tronzo v. Biomet, Inc.
` 156 F.3d 1154 (Fed. Cir. 1998) .............................................................................. 2
`
`  
`
`Statutes
`35 U.S.C. § 112 .......................................................................................................... 1
` 
`35 U.S.C. § 132(a) ...................................................................................................... 1
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`35 U.S.C. § 316(a) ..................................................................................................... 6
` 
`35 U.S.C. § 326(a) ..................................................................................................... 6
` 
`37 C.F.R. § 42.221(a)(2)(i–ii) .................................................................................... 1
`
`Rules
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` 
`Office Patent Trial Practice Guide, Fed. Reg. Vol. 77, No. 157, p. 48767, col. 2 .... 6
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` 
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`ii
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`I. The Proposed Substitute Claims Improperly Enlarge the Scope of the
`Original Claims and Introduce New Matter
`
`Cuozzo proposes substitute claims 21–23 for original claims 10, 14, and 17.1
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`The Board should reject the substitute claims because they improperly enlarge the
`
`scope of the original claims and introduce new subject matter not previously
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`disclosed in the ’074 Patent. See 37 C.F.R. § 42.221(a)(2)(i–ii); 35 U.S.C.
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`§§ 132(a), 112.
`
`A. Claims 21 and 22 Improperly Enlarge and Lack Support
`
`The Board’s construction of “integrally attached” precludes a single
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`electronic display that operates as a speedometer and a colored display. Cuozzo
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`attempts to circumvent the Board’s construction by reciting in claim 21 that the
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`speedometer comprises an LCD, and the colored display is the LCD. (Paper 32 at
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`4) (emphasis added.) Cuozzo subtly suggests that the subject matter of dependent
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`claims 12 and 18 have merely been merged into prior independent claim 10. (Paper
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`32 at 4, 7.) But substitute claim 21, contrary to original claim 10, purports to
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`encompass a single LCD that is itself both the speedometer and the colored
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`display. Because such an embodiment would not have infringed the original claims
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`as construed by the Board, Cuozzo’s substitute claims improperly enlarge the
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`scope of the original claims. See 37 C.F.R. § 42.221(a)(2)(i–ii); 35 U.S.C. § 132(a);
`                                                            
`1 It is unclear if Cuozzo has canceled original claims 10, 14, and 17 or is arguing in
`the alternative for the patentability of claims 21–23. (See Paper 31 at 2, ¶¶ 1, 3.)
`1
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`Case No.: IPR2012-00001
`Patent No.: 6,778,074 
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`Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1580 (Fed. Cir. 1995) (amended or
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`new claim is enlarged if it includes any subject matter that would not have
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`infringed original patent; claim is broader than original claims if it is broader in
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`any respect, even if narrower in other respects).
`
`Additionally, as discussed in Garmin’s Reply, there is no written-description
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`support in the ’074 Patent for an electronic embodiment in which the speedometer
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`and the colored display are merged into a single LCD display. Further, Cuozzo’s
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`own expert, Dr. Morris, contends such an embodiment is merely “implied” by the
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`’074 Patent and it would be “natural” for one skilled in the art to create such a
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`system, because there is no such actual disclosure in the patent. (Ex. 2002 at ¶¶ 28–
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`29 (emphasis added); see also Ex. 1021 at 17, tr. 65:14–68:16.) This is insufficient
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`under the law. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998)
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`(“In order for a disclosure to be inherent, . . . the missing descriptive matter must
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`necessarily be present in the . . . specification such that one skilled in the art would
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`recognize such a disclosure.”); New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
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`298 F.3d 1290, 1295 (Fed. Cir. 2002). Because written-description support does
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`not exist, the Board should reject the substitute claims.
`
`
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`B. Claim 23 Improperly Enlarges and Lacks Support
`
`Substitute claim 23 also attempts to enlarge the scope of the claims and add
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`new subject matter. The plain language of original claims 1 and 10 makes clear
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`that it is the separate colored display—not the speedometer itself (or a graphical
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`speedometer shown on an LCD)—that is adjusted to perform the act of
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`continuously updating the delineation of which speed readings (plural) violate the
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`speed limit. However, to support its infringement argument, Cuozzo needs claim
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`23 to cover changing the color of a current speed reading (e.g., 46 mph) when the
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`speed limit (e.g., 45 mph) is exceeded. By reciting in claim 23 that the display
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`controller adjusts the LCD “to show speed readings in a first color or colored
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`region when the vehicle’s present speed exceeds the speed limit,” Cuozzo
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`improperly attempts to enlarge its claims to cover the speed turning red once it
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`exceeds the speed limit. That is, displaying a single speed reading in red once the
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`speed reading exceeds the speed limit would not have infringed the original claims,
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`and as such, substitute claim 23 improperly enlarges the scope of the original
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`claims.
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`Cuozzo’s own expert admitted in his deposition that claim 10 would not
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`cover the subject matter Cuozzo now seeks to add in claim 23:
`
`Q. When you read the language in Claim 10, “to continuously update
`the delineation of which speed readings are in violation of the
`speed limit,” do you read that as covering a system which only
`adjusts the colored display after the speed limit is exceeded?
`A. …[T]his seems to clearly indicate that the display controller
`adjusts a colored display, so it is at all times showing the range of
`appropriate speed limits; so this claim requires, strongly requires,
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`that the relation between your current speed and the permissible
`speeds is evident all the time. So the embodiment I was suggesting
`in which you simply, in which you simply abruptly change the
`letters from white, or the numbers from white to red, wouldn't be
`called for here. That would be something different. You could
`rescue that implementation by slowly changing the colors of the
`numbers, but that’s a somewhat strange way to do things.
`. . .
`Q. So an abrupt change to red isn’t what this claim language in Claim
`10 is describing?
`A. Right.
`
`(Ex. 1021 at 19–20, tr. 76:6–77:25.)
`
`The ’074 Patent’s express disclosure and its prosecution history further
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`support that it is the speed readings (plural) that are delineated—and not simply
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`changing a single speed reading to red once the vehicle’s speed exceeds the speed
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`limit. In particular, the ’074 Patent discloses that the colored filter continuously
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`rotates to delineate the speed readings exceeding the speed limit. (’074 Patent, Fig.
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`2, 5:35–39.) The primary meaning of the term “delineate” is “to indicate or
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`represent by drawn or painted lines” or “to mark the outline of,” which is not the
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`same as changing the speedometer speed reading once the speed limit is exceeded.
`
`(Ex. 1022, Definition of “Delineate”.)
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`Further, the ’074 Patent discloses adjusting the colored display by “rotating
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`[the] red filter disc 54 to the appropriate degree,” such that “speeds above the legal
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`speed limit are displayed in red 50 while the legal speeds are displayed in white
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`52.” (’074 Patent, 5:35–39; Fig. 2.) The relied-upon Fig. 2 refers to the respective
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`vehicle speeds displayed on a “white speedometer region” and a “red speedometer
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`region.” (’074 Patent, Fig. 2, Boxes 50, 52 (emphases added).) Displaying a region
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`of speeds above the speed limit is not equivalent to changing a single speed
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`reading to red once the vehicle’s speed exceeds the speed limit.
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`The ’074 Patent also emphasizes at least 13 times that the display of “the
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`present invention” must show how the speed limit and the current speed relate to
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`each other. (See ’074 Patent at 3:66–4:28.) See Honeywell Int’l, Inc. v. ITT Indus.,
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`Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (public entitled to take patentee’s word
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`for what “the invention” is). The file history also confirms this. (See Ex. 1013 at 6–
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`7 (“the present invention provides an integrated display allowing the driver to
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`immediately ascertain both his speed and its relation to the prevailing speed limit”
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`and “the present invention continuously updates the visual warnings provided to
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`the driver regarding the prevailing speed limit in response to the vehicle’s location
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`regardless of the vehicle’s speed.”) (emphases added).) Displaying a single speed
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`reading in red when the speed exceeds the speed limit does not let the driver
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`“immediately ascertain” both his speed and its relation to the prevailing speed
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`limit. Claim 23, therefore, improperly enlarges and adds new matter.
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`5
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`Case No.: IPR2012-00001
`Patent No.: 6,778,074 
`II. Garmin’s Citation of Nagoshi and Vaughn Are Directly Responsive to
`New Issues Arising from the Proposed Substitute Claims
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`The opponent of a motion to amend “may respond to new issues arising
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`from proposed substitute claims including evidence responsive to the amendment.”
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`Office Patent Trial Practice Guide, Fed. Reg. Vol. 77, No. 157, p. 48767, col. 2,
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`(citing 35 U.S.C. §§ 316(a), 326(a). Accordingly, Garmin proposes rejections
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`based on two new references: JP Patent Application No. H03-229080 to Nagoshi
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`(Ex. 1016) and U.S. Patent No. 5,485,161 to Vaughn (Ex. 1018).
`
`Because the critical date of Cuozzo’s ’074 Patent is March 18, 2001, both
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`Nagoshi (published March 19, 1993) and Vaughn (issued January 16, 1996) are
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`§ 102(b) art. Vaughn was cited by the Examiner but not relied upon as a basis for a
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`rejection during original examination of the ’074 Patent.
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`
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`Garmin proposes a rejection in view of Nagoshi for teaching displaying the
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`speed limit on an LCD, as generally claimed in claim 21. Additionally, Garmin
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`submits Vaughn for teaching the amended claim limitations in claims 21 and 22
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`directed to the GPS determining the vehicle’s present location, speed, and speed
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`limit (claim 21) and performing a comparison of the current speed to the speed
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`limit (claim 22). Garmin also submits both Nagoshi and Vaughn for teaching the
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`speedometer and colored display comprising or being the LCD (claim 21).
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`Garmin originally advanced Aumayer to teach the general concept of
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`indicating, on a speedometer, the speed limit of a road section for which the
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`vehicle is currently traveling (Paper 1 at 34–37) and Awada to teach a GPS
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`determining the speed limit (Paper 1 at 37–38). Although Garmin submits in its
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`Reply that Cuozzo’s attempt to swear behind Aumayer and Awada (Paper 31 at
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`13–21) is ineffective, Nagoshi and Vaughn nonetheless teach the limitations
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`collectively relied upon in Aumayer and Awada.
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`
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`Cuozzo also asserts that Aumayer does not teach the limitations of substitute
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`claim 23 generally directed to continuously adjusting the LCD to show speed
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`readings in a first color or colored region. In particular, Cuozzo asserts that
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`Aumayer’s colored tick mark indicating the speed limit shows only speed readings
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`below and above the speed limit. (Paper 32 at 15.) Although Garmin strongly
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`disagrees with this contention, Nagoshi teaches claim 23’s features in any event.
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`III. Substitute Claims 21–23 Are Obvious Over Nagoshi in View of Vaughn
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`Nagoshi teaches a speedometer dial with a concentric band of LEDs
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`surrounding the speed readings. The LED region surrounding speed readings
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`below the speed limit are lit in green, and the LED region surrounding speed
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`readings above the speed limit are lit in red.2 Nagoshi achieves the advantage
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`                                                            
`2 German Patent No. DE 199 01 808 B4 to Werner also teaches a concentric region
`of LEDs surrounding the speed readings on a speedometer to indicate the
`“permissible speed range.” (Ex. 1020 at 4, ¶ 8 (“The permissible speed range can
`be identified also by light emitting diodes lit in green color, while the region above
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`Patent No.: 6,778,074 
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`argued by Cuozzo for allowance of the ’074 Patent during original examination:
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`“allow[ing] the driver to immediately ascertain both his speed and its relation to
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`the prevailing speed limit.” (Ex. 1013 at 6 (emphasis added).) A driver viewing the
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`colored LED regions of Nagoshi would know the speed limit and its relation to the
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`vehicle’s present speed.
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`Claim 21
`
`A speed limit indicator
`comprising
`A global positioning
`system receiver
`determining a vehicle’s
`present location, a
`vehicle’s present speed
`and a speed limit at the
`vehicle’s present
`location;
`
`
`Obvious Over Nagoshi (Ex. 1016) in
`View of Vaughn (Ex. 1018)
`Nagoshi discloses a “vehicle speed limit warning
`device.” (See Title, ¶ 0006.)
`Nagoshi discloses a “vehicle location computation
`means 3 computing the location coordinates of the
`current location of the vehicle.” (Nagoshi, ¶ 0006.)
`The “vehicle location computation means may be
`configured by employing GPS . . . .” (¶ 0019.)
`Nagoshi does not expressly disclose that the GPS
`determines a vehicle’s present speed and the speed
`limit. However, in related art, Vaughn teaches such.
`
`In more detail, Vaughn discloses a system that uses
`GPS and map matching to determine the maximum
`posted speed limit at the vehicle’s present location.
`(Vaughn, 1:63–67; 2:14–17; 4:24–25.) A GPS
`computer 47 includes a GPS microprocessor 52, GPS
`memory unit 50, and local database processing facility
`42 (“DB facility 42”). (Fig. 2 (see reference numeral
`47 for GPS computer enclosing, via broken line, the
`DB facility 42 and other components); 2:50–52
`
`                                                                                                                                                                                                
`the permissible speed limit is highlighted by red light emitting diodes.”).) Garmin
`thus submits that substitute claims 21–23 are also obvious over Werner in view of
`Vaughn, with the teachings of Werner replacing the teachings of Nagoshi in the
`claims charts provided herein.
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`(describing the DB facility being hardwired to the
`GPS computer); 7:25–27.) The DB facility 42 “may be
`implemented by using GPS memory unit 50 and GPS
`microprocessor 52.” (8:9–10.)
`
`“A GPS navigation computer [47] determines location
`and speed of the vehicle . . . .” (2:14–15; 7:58–59.)
`The location and speed, as determined by the GPS
`computer, are “transmitted to the database processing
`facility.” (2:58–60.) “The local database facility 42
`provides the map information including location,
`speed of the vehicle and the maximum posted speed to
`the GPS computer 47 . . . .” (8:52–55.) Note further
`that the GPS computer inputs the speed limit from a
`map database, which includes the DB facility 42.
`(2:15–16, 47–50.)
`
`One of ordinary skill in the art (“OSA”) would have
`had a credible reason to combine Vaughn’s teaching of
`a GPS that determines the vehicle’s speed and the
`speed limit for the vehicle’s present location with
`Nagoshi’s vehicle speed limit warning device. First,
`Nagoshi contemplates use of a GPS to determine the
`vehicle location. Nagoshi also determines speed limit
`via receiver 6 comprising beacons on the road.
`(Nagoshi, ¶ 0010.) Having the Nagoshi GPS also
`determine speed and speed limit, as taught by Vaughn,
`“gain[s] the commonly understood benefits of . . .
`decreased size, increased reliability, simplified
`operation, and reduced cost.” Leapfrog Enters., Inc. v.
`Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
`2007). For example, instead of using beacons on the
`road, Vaughn teaches the GPS having a map database
`that includes the speed limit information. Such a
`modification of Nagoshi’s GPS to include speed and
`speed limit is well within the knowledge of an OSA so
`as to simplify operation (use of a local database as
`compared to road beacons) and reduce costs (not
`having to place the road beacons). Moreover, as
`expressly taught by Vaughn (7:30–32), one of OSA
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`etermine GPS can deze that a Gwould easily recogniz
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`
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`
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`speed (i.e., “instantanneous velo
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`to the GPSS
`city”) due
`
`
`
`
`tracking the vehicle’ss location aand time annd would
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`
`
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`have a creddible reasoon for modiifying Naggoshi’s GP
`
`
`
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`to simplifyy operationn of the GPPS and not hhave to
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`
`
`
`
`as the vehi
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`cle’s speeddometer.
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`
`
`
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`Nagoshi diiscloses a mmicrocompputer 12 thhat operatess to
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`
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`receive speeed limit innformationn and send
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`to a displaay
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`
`
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`apparatus 113, such thhat the “dissplay apparratus 13
`
`
`
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`displays the speed limmit informaation acquuired from
`
`
`
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`said microccomputer 112.” (¶¶ 00014–0015.)) Nagoshi
`
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`further disccloses a coolored disp
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`
`lay for dispplaying thee
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`
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`speed readiings in greeen or red ddepending
`
`on whetheer
`
`
`
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`the speed rreading is bbelow or abbove a speeed limit.
`
`
`
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`(¶ 0016.) NNagoshi teaaches that tthe speed llimit
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`
`
`
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`informationn can be booth alphannumericallyy displayedd as
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`
`
`
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`part of the speedometter, and fururther that ““the driverr is
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`
`
`
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`informed oof the speedd limit of tthe road cuurrently beiing
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`
`
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`driven by tthe displayy green LEDDs of the vvelocities
`
`
`
`
`below the sspeed limitt on the ouuter side off the
`
`speedomet
`er and the
`velocities
`above the
`0016; Fig.
` 5.) Thus,
`
`as shown iin Fig. 5
`in red.” (¶
`
`
`
`
`
`concentric
`
`
`
`region of LLEDs surrrounding thhe speed
`
`are coloreed
`
`
`
`denoting mmarkings off 40 km/h aand below
`
`
`
`green, and a region oof LEDs suurrounding
`the speed
`
`
`
`
`denoting mmarkings abbove 40 kmm/h are collored red.
`
`Nradsfst(ipidbsibcdgd
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`below, for speeds bellow the speeed limit oof 40 km/h,, a
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`speed limiit
`
`wsthtoa
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`obtain the vvehicle speeed from oother compponents, suuch
`
`S
`
`
`
`A display controlller
`
`
`conneccted to saidd global
`m
`
`positiooning syste
`
`
`receiveer, whereinn said
`
`
`displayy controllerr
`
`adjustss a colored
`
`
`displayy in responnse to
`
`
`signalss indicativee of the
`
`
`speed llimit at thee
`
`
`vehiclee’s presentt
`
`
`locatioon from saiid
`
`
`global positioninng
`
`
`systemm receiver tto
`
`
`continuuously upddate the
`
`
`delineaation of whhich
`
`speed rreadings
`
`
`determmined by thhe
`
`
`global positioninng
`
`
`systemm receiver aare in
`
`violatioon of the s
`peed
`le’s
`
`limit att the vehic
`and
`
`presentt location;
`
` Tns
`
`
`
`
`
`
`
`
`Thus, Nagooshi disclooses adjustiing a colorred displayy,
`
`
`
`
`namely thee green andd red LEDss, in responnse to the
`
`
`
`
`
`speed limitt at the vehhicle’s pressent locatioon. Garminn
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`notes that in ¶ 0016, Nagoshi references Fig. 4, which
`does not show the green region below 40 km/h shaded,
`as it is in Fig. 5. One of OSA would understand that
`the teaching of ¶ 0016 in combination with Fig. 5
`illustrates that any speeds below 40 km/h are in green,
`and any speeds above 40 km/h are in red, with 40
`km/h being the speed limit.
`
`Nagoshi does not explicitly disclose that its
`microcomputer 12 or display apparatus 13 is
`connected to the GPS receiver, as claimed. However,
`Vaughn discloses a “display 12[, which] is connected
`to the GPS computer 47 and to the engine computer
`15. Accordingly, the location, current speed of the
`vehicle and the maximum posted speed is displayed on
`the electronic map.” (Vaughn, 9:20–23.) The display
`12 of Vaughn is an LCD and is an “interface between
`the user, the GPS receiver, and the database processing
`facility.” (9:12–16.) As noted above for the previous
`limitation, Vaughn’s GPS determines the current
`location, the vehicle speed, and the speed limit.
`
`It would have been obvious to one of OSA to take the
`teachings of Vaughn of connecting the GPS to the
`display, i.e., the LCD, and displaying the maximum
`posted speed, current speed, and location on the
`electronic map and combine these teachings with
`Nagoshi. Nagoshi teaches a display apparatus 13,
`which displays speed limit information (Nagoshi, ¶
`0015), and a GPS (¶ 0019). One of OSA would have a
`credible rationale to connect the Vaughn GPS to the
`Nagoshi display apparatus 13 to display the speed
`limit, speed, and location determined by the GPS, as
`taught by Vaughn. Such would have allowed
`information, as determined by the GPS, to be
`displayed on the same display screen, which is already
`taught by Nagoshi in Fig. 5.
`Nagoshi discloses a “speedometer” (¶ 0016; Figs. 4–5)
`and a colored display comprising a series of green and
`red LEDs, as discussed above, “on the outer side of the
`11
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`a speedometer integrally
`attached to said colored
`display,
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`speedometer.” (¶ 0016). To the extent one of OSA
`would appreciate the disclosure of separate LEDs to be
`attached to but still retain an identity distinct from
`(i.e., not on a single electronic display with) the
`speedometer, then the Board’s construction is
`satisfied. To the extent one of OSA would consider the
`LEDs to be part of a single electronic display that is
`also itself the speedometer, then Nagoshi discloses a
`speedometer “joined or combined to work as a
`complete unit” with the colored LEDs, per Cuozzo’s
`construction.
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`Similarly, Vaughn discloses displaying the vehicle’s
`current speed and maximum posted speed limit; and
`Vaughn further discloses that the display can be LEDs,
`LCD, or CRT video screens. (Vaughn, 9:10–17.)
`Nagoshi discloses a display apparatus that comprises
`LEDs. (¶ 0016). Nagoshi further states “[o]ne example
`of the form of the display is represented in the elevated
`view of the speedometer in FIG. 4.” Id. Therefore, one
`of OSA would understand that Nagoshi’s
`speedometer, which is displayed on display apparatus,
`comprises an LCD. Similarly and as noted above,
`Vaughn expressly discloses displaying the current
`vehicle speed on a display 12 comprising an LCD.
`(9:14–17).
`As illustrated in Fig. 5 of Nagoshi, the colored display
`of the green and red LEDs is illustrated on the display
`apparatus 13. (See also ¶¶ 0015–16.) As noted above,
`one of OSA would understand the green and red LEDs
`to be part of an LCD. Similarly and as noted above,
`Vaughn discloses a display 12 that is an LCD. (9:14–
`17). To the extent Nagoshi does not expressly disclose
`an LCD, Vaughn’s teaching of an LCD for displaying
`the speed readings and speed limit information,
`combined with Nagoshi’s teaching of colored LEDs
`indicating speeds below and above a legal speed limit,
`would have been obvious to one of OSA. This is
`because use of an LCD as an electronic display that
`can display colors is well known to one of OSA.
`12
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`wherein the
`speedometer comprises
`a liquid crystal display
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`wherein the colored
`display is the liquid
`crystal display.
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` 
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`

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`Case No.: IPR2012-00001
`Patent No.: 6,778,074 
`
`Claim 22
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`The speed limit
`indicator as defined in
`claim 21, wherein said
`global positioning
`system receiver
`compares the vehicle’s
`present speed and the
`speed limit.
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`Claim 23
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`The speed limit
`indicator as defined in
`claim 21, wherein the
`display controller
`continuously adjusts the
`liquid crystal display to
`show speed readings in
`a first color or colored
`region when the
`vehicle’s present speed
`exceeds the speed limit
`at the vehicle’s present
`location and a color or
`colored region different
`from the first color
`when the vehicle’s
`present speed is less
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`Obvious Over Nagoshi (Ex. 1016) in
`View of Vaughn (Ex. 1018)
`Nagoshi and Vaughn teach each of the limitations
`recited in claim 21, as set forth above.
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`Nagoshi discloses, either expressly or inherently,
`comparing the vehicle’s present speed and the speed
`limit. In particular, Nagoshi teaches that “when the
`driven speed of the vehicle exceeds the speed limit,
`instead of displaying the speed limit on the
`speedometer, the driver can be informed thereof by the
`sounding of a warning buzzer . . . .” (¶ 0018).
`Nagoshi’s system would not know when to warn the
`driver if some comparison of the vehicle speed to the
`speed limit was not otherwise made.
`
`Vaughn also discloses comparison of the speed to the
`speed limit: “The GPS computer or an engine
`computer perform the comparison between the vehicle
`speed and the maximum posted speed . . . .” (Vaughn,
`Abstract)
`Obvious Over Nagoshi (Ex. 1016) in
`View of Vaughn (Ex. 1018)
`Nagoshi and Vaughn teach each of the limitations
`recited in claim 21, as set forth above.
`In Fig. 5 of Nagoshi, a concentric band of green and
`red LEDs surrounds the speed reading markings on the
`speedometer (compare shading for the region
`identified as “green” to the lack of shading for the
`region identified as “red”). As the speed limit changes,
`the LED colors will change accordingly. Thus, the
`display apparatus 13 of Nagoshi continuously adjusts
`the LEDs (or colored region of LEDs) of the LCD to
`show speed readings in a first color, namely red, when
`the vehicle’s speed exceeds the speed limit at the
`vehicle’s location, as claimed in claim 23. Further, a
`second color different from the first color, namely
`green, is used when the vehicle’s speed is less than the
`speed limit at the vehicle’s location. To the extent
`Nagoshi does not expressly disclose an LCD, it would
`13
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`Case No.: IPR2012-00001
`Patent No.: 6,778,074 
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`have been obvious to combine Vaughn’s teaching of
`an LCD, as set forth above.
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`than the speed limit at
`the vehicle’s present
`location.
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`IV. Claims 21–23 Are Also Obvious in View of Garmin’s Original
`References Combined with Vaughn and Nagoshi
`
`
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`Applying Cuozzo’s construction of “integrally attached” that includes a
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`single electronic display, Garmin submits that claims 21–22, in view of Vaughn,
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`are also obvious over Aumayer and Tegethoff. Regarding claim 21, both Aumayer
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`and Tegethoff teach a display controller that adjusts a colored display of an LCD,
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`namely the red tick mark that identifies the speed limit in relation to the speed
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`readings of the speedometer also displayed on the LCD. (Paper 1 at 35, 38–39.)
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`Regarding claims 21 and 22 relative to the recited GPS and functions, Vaughn
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`teaches a GPS that determines the vehicle’s speed, location, and the speed limit
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`(claim 21) and that compares the vehicle’s present speed to the speed limit (claim
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`22), as described in the above claims chart. One of OSA would have had a credible
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`rationale to combine the teachings of Aumayer and Vaughn or Tegethoff and
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`Vaughn to simplify operation of the Aumayer GPS and modernize the element for
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`navigation of Tegethoff so as to not have to obtain the vehicle speed from other
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`components, such as the vehicle’s speedometer.
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`
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`Claim 23 is obvious over both Aumayer, Vaughn, and Nagoshi and
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`Tegethoff, Vaughn, and Nagoshi. Nagoshi discloses the speed readings in a first
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`color or colored region, namely the concentric regions of green and red LEDs
`14
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`Case No.: IPR2012-00001
`Patent No.: 6,778,074 
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`surrounding the speed readings. One of OSA would have had a credible rationale
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`to combine Nagoshi with Aumayer/Vaughn or Tegethoff/Vaughn so that
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`“connections between different driving parameters can be clarified to the driver in
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`a very clear and intuitively comprehensible manner … .” (Ex. 1003 at 3, col. 1.)
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`Moreover, modifying Aumayer’s or Tegethoff’s LCD to include a red/green
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`concentric region surrounding the speed readings does not otherwise prevent the
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`continued marking of the speed limit with the red tick mark.
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`
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`Applying the Board’s construction of “integrally attached” that excludes a
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`single electronic display, claims 21–22 are also obvious over both Aumayer and
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`Tegethoff in view of Vaughn, Evans, and Wendt. As set forth in Garmin’s Reply, it
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`would have been obvious to one of OSA to mount a rotatable pointer, as taught by
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`Evans and Wendt, to the Aumayer/Tegethoff LCD. It would also have been
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`obvious to modify the Aumayer/Tegethoff LCD and speed-limit-alert devices to
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`include the teachings of a GPS that determines speed, vehicle location, and speed
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`limit, as taught by Vaughn and as discussed above for Cuozzo’s proffered
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`construction.
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`V. Conclusion
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`In view of the above, Garmin requests that the Board reject substitute claims
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`21–23 and find them unpatentable.
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`15
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`Case No.: IPR2012-00001
`Patent No.: 6,778,074 
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`Respectfully submitted,
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`
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`HOVEY WILLIAMS LLP
`
` By: s/ Jennifer C. Bailey
`
`
`
`Jennifer C. Bailey, Reg. No. 52,583
`
`Scott R. Brown, Reg. No. 40,535
`10801 Mastin Blvd., Suite 1000
`Overland Park, KS 66210
`P: (913) 647-9050
`F: (913) 647-9057
`jcb@hoveywilliams.com
`srb@hoveywilliams.com
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`Eric A. Buresh, Reg. No. 53,394
`Jason R. Mudd, Reg. No. 57,700
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`Eric.Buresh@EriseIP.com
`Jason.Mudd@EriseIP.com
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`ATTORNEYS FOR PETITIONER
`(IPR Trial No. 2012-00001)
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`16
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`Case No.: IPR2012-00001
`Patent No.: 6,778,074 
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`CERTIFICATE OF SERVICE
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`I certify that on May 21, 2013, a true and correct copy of Petitioner’s Reply
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`to Patent Owner’s Response has been provided, via electronic mail to counsel of
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`record as follows:
`
`John Robert Kasha, Esq.
`KASHA LAW LLC
`
`Cabrach J. Connor
`Jason W. Deats
`REED & SCARDINO LLP
`
`David A. Skeels
`FRIEDMAN, SUDER & COOKE
`
`ATTORNEYS FOR PATENT OWNER CUOZZO SPEED TECHNOLOGIES
`LLC
`
`Email: john.kasha@kashalaw.com
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`Email: cconnor@reedscardino.com
`Email: jdeats@reedscardino.com
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`Email: skeels@fsclaw.com
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` s/ Jennifer C. Bailey
`Jennifer C. Bailey
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`17