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
`____________
`
`
`
`Case:
`
`
`
`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
`
`____________
`
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`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 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 TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`
`Case No.: IPR2012-00001
`Page 1
`
`Patent No: 6,778,074
`Cuozzo Speed Technologies LLC (“Patent Owner”) submits this reply to
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Amend (Paper 39).
`
`I.
`
`Substitute Claims 21-23 are Narrower in Scope than Original Claim 10.
`
`Substitute claim 21 recites verbatim all of the limitations of original claim 10
`
`and includes additional limitations. Thus, there is no basis for Petitioner’s assertion
`
`that substitute claim 21 enlarges the scope of original claim 10. In a blatant attempt
`
`to confuse the Board, Petitioner cites to Quantum Corp. v. Rodine, PLC, 65 F.3d
`
`1577, 1580-82 (Fed. Cir. 1995) in which the Court held that amendment of an
`
`original claim from “at least 600 tpi” to “at least approximately 600 tpi” in a
`
`reexamination improperly enlarged the scope of the original claims. Quantum is
`
`irrelevant to the instant proceeding in which Patent Owner’s amendment changes
`
`none of the original claim language, adding only narrowing limitations.
`
`Indeed, as a matter of law, substitute claim 21 must be narrower in scope than
`
`original claim 10, because it recites language identical to original claim 10 and adds
`
`several limitations. 35 U.S.C. § 112(d). Similarly, substitute claims 22 and 23
`
`depend from, and therefore include all of the limitations of, substitute claim 21.
`
`Accordingly, the Board should reject Petitioner’s assertion that substitute claims 21-
`
`23 enlarge the scope of original claim 10.1
`
`
`1 Petitioner’s assertions regarding enlargement of scope of new matter are based on
`37 C.F.R. § 42.221(a)(2)(i-ii) which are applicable to Post Grant Review, not Inter
`Partes Review.
`
`
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`
`Case No.: IPR2012-00001
`Page 2
`
`Patent No: 6,778,074
`II.
`Substitute Claims 21-23 are Fully Supported by the Original Disclosure.
`
`
`
`
`Petitioner alleges that substitute claims 21-23 introduce new matter but does
`
`not advance a single argument refuting any of the support for such claims in the
`
`original disclosure of the ’074 Patent detailed in Patent Owner’s Motion to Amend.
`
`For example, with regard to substitute claims 21 and 22, Petitioner does not dispute
`
`that original claim 18 depends from original claim 10 and recites, “wherein the
`
`speedometer comprises a liquid crystal display.” Petitioner does not dispute that
`
`fundamental claim construction law presumes that “a” means “one or more,” and
`
`therefore, original claim 18 encompasses an embodiment of the invention in which
`
`the speedometer comprises one or more liquid crystal displays. KCJ Corp. v. Kinetic
`
`Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). Finally, Petitioner does not
`
`dispute that original claim 12 recites, “wherein the colored display is a liquid crystal
`
`display.” Therefore, Petitioner has not in any way disputed that original claims 10,
`
`12 and 18 fully support substitute claim 21 which is directed to an embodiment of the
`
`invention in which the speedometer comprises a liquid crystal display and the colored
`
`display is the liquid crystal display.
`
`Moreover, Petitioner’s argument ignores the perspective of one skilled in the
`
`art established by the unrebutted evidence presented by Patent Owner. In his
`
`declaration and at deposition, Prof. Morris, an expert in the field of the invention,
`
`explained why a person of skill in the art would understand the claims to encompass
`
`
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`
`Case No.: IPR2012-00001
`Page 3
`
`Patent No: 6,778,074
`the use of a single LCD for the speedometer output and the colored display (Ex.
`
`
`
`1021, Morris Tr. at 38:21-39:14).
`
`Regarding substitute claim 23, Petitioner does not dispute the support detailed
`
`in Patent Owner’s Motion to Amend.2 Instead, Petitioner performs a hypothetical
`
`infringement analysis premised on Petitioner’s newly-proposed interpretations of
`
`“delineation,” “speed readings” and “colored.” Petitioner, however, never proposed
`
`constructions for these terms (which are recited in the original claims) in the Petition
`
`as required by the rules and provides no intrinsic support for its position now. Thus,
`
`the Board should reject Petitioner’s new claim construction arguments which are
`
`untimely and prejudicial to Patent Owner.
`
`Petitioner’s only alleged support for its untimely argument is the recent
`
`testimony by Prof. Morris, who submitted a declaration in this proceeding concerning
`
`the meaning of “integrally attached” as understood by one of skill in the art at the
`
`time of the invention.3 At deposition, however, Petitioner questioned Prof. Morris
`
`about subject matter (1) outside the scope of his declaration and (2) for which he was
`
`not prepared to offer an opinion.4 Accordingly, this portion of Prof. Morris’s
`
`
`2 Petitioner makes reference to claim 1 with respect to its allegation of new matter
`for substitute claim 23, but claim 1 is not at issue in this proceeding.
`3 Petitioner vaguely references the testimony of Mr. Cuozzo, the inventor of the
`‘074 Patent. Mr. Cuozzo has completed an errata which corrects and clarifies his
`deposition testimony (Ex. 1026).
`4 Prof. Morris has completed an errata which corrects and clarifies the testimony
`relied upon by Petitioner (Ex. 1027). Further, Prof. Morris testified that he would
`
`
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`
`Case No.: IPR2012-00001
`Page 4
`
`Patent No: 6,778,074
`testimony is appropriately excluded from the record under 37 C.F.R. § 42.53(d)(5)(ii)
`
`
`
`and should not be considered.
`
`III.
`
`Subsitute Claims 21-23 are Patentable Over Nagoshi in view of Vaughn.
`
`A. Neither Nagoshi nor Vaughn, either alone or in combination, discloses
`or suggests “the colored display is the liquid crystal display.”
`
`Nagoshi never discloses or suggests a “liquid crystal display” as recited in
`
`
`
`substitute claim 21. Nagoshi merely discusses LEDs surrounding a speedometer
`
`display, which are colored based on a speed limit. Contrary to Petitioner’s assertion,
`
`Figures 4 and 5 of Nagoshi would not lead one of skill in the art to believe that the
`
`speedometer display with LEDs in Nagoshi must be an LCD. Indeed, the “display”
`
`of Nagoshi appears to be an analog speedometer display surrounded (schematically)
`
`by the LEDs.
`
`Vaughn does cure this deficiency in Nagoshi. Vaughn does not disclose or
`
`suggest a “colored” display. The vague reference to LEDs, LCDs, and CRT screens
`
`showing position and velocity never reference color or any reason to depict such
`
`information in color. The LEDs, LCD, and CRT screens in Vaughn do not disclose
`
`or suggest “the colored display is the liquid crystal display” of substitute claim 21.
`
`
`need more time to consider issues Petitioner questioned him about that were
`outside the scope of his declaration. See Ex. 1021 at 77:19-22; 97:16-98:12 (“I
`could spend more time in it, certainly if I compare it to the Smith thing . . . So I’m
`a little bit confused by this, yes, so I could spend more time”).
`
`
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`
`Case No.: IPR2012-00001
`Page 5
`
`Patent No: 6,778,074
`Neither Nagoshi nor Vaughn, alone or in combination, disclose or suggest,
`
`
`
`“the colored display is the liquid crystal display” as recited in substitute claim 21.
`
`Because claims 22 and 23 depend from, and therefore include, all of the limitations
`
`of claim 21, it is respectfully submitted that these claims are also allowable.
`
`B. There Is No Motivation to Combine Nagoshi and Vaughn.
`
`Nagoshi and Vaughn are incompatible. Nagoshi’s device provides a speed
`
`warning whereas Vaughn ensures that a vehicle can never exceed the speed limit.
`
`The Nagoshi device would be useless when combined with the Vaughn system
`
`because the Vaughn system would automatically prevent the vehicle from exceeding
`
`the speed limit, so the Nagoshi device would never be invoked. Moreover, the speed
`
`limit (and Nagoshi LED indicators) would be irrelevant to a driver using the Vaughn
`
`system because Vaughn prevents the vehicle from exceeding the speed limit.
`
`Petitioner’s conclusory reason for combining Vaughn with Nagoshi is limited
`
`to the single use of the term “GPS” in Nagoshi. Otherwise, Nagoshi and Vaughn are
`
`directed to completely different problems and have completely different
`
`architectures. Indeed, Nagoshi is almost wholly directed to its speedometer display
`
`user interface, and Vaughn relegates its discussion of a man-machine interface to a
`
`single sentence vaguely referencing LEDs, LCDs, and CRTs.
`
`
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`IV.
`Conclusion
`
`
`
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`Page 6
`
`In light of the remarks herein, Patent Owner respectfully requests that the
`
`Board grant its Motion to Amend. If the Board has any questions, comments, or
`
`suggestions, the undersigned attorney earnestly requests a telephone conference.
`
`No fees are required for filing this amendment; however, the Commissioner is
`
`authorized to charge any additional fees which may be required, or credit any
`
`overpayment, to Kasha Law LLC, Deposit Account No. 50-4075.
`
`
`
`
`
`
`
`Customer No. 67050
`Date: June 21, 2013
`
`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
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Attorney’s Docket No.: CUO0001-RE
`Page 7
`
`In accordance with 37 C.F.R § 1.550(f), a copy of the Patent Owner’s Reply
`To Petitioner’s Opposition To Patent Owner’s Motion To Amend filed by the
`Cuozzo Speed Technologies LLC on June 21, 2013, was duly served on the Inter
`Partes Requester via e-mail on June 21, 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
`
`
`
`
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