UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
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`Patent of CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`
`____________
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`Case IPR: To Be Assigned
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`Patent 6,778,074
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`____________
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`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
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`TABLE OF CONTENTS
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`I.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ................................................. 1
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`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................................... 1
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`A. 
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`B. 
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`C. 
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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) and Service Information
`Under 37 C.F.R. § 42.8(b)(4) ...................................................................................... 2
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`II.  REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104 ............. 3
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`A. 
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`Certification of Grounds for Standing Under 37 C.F.R. § 42.104(a) .......................... 3
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`B. 
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ........ 3
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`1. 
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`2. 
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`3. 
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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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` Identification of 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) ............................................................................................. 7
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`4.  How the Construed Claim(s) Are Unpatentable Under 37 C.F.R. § 42.104(b)(4) ..... 10
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`III.  SUMMARY OF THE ’074 PATENT .................................................................................. 11
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`5.  Supporting Evidence Under 37 C.F.R. § 42.104(b)(5) ............................................... 11
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`A. 
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`Description of the Alleged Invention of the ’074 Patent ........................................... 11
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`B. 
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`Summary of the Prosecution History of the ’074 Patent ........................................... 12
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`IV.  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) ................. 14
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`V.  DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b) ......................................... 17
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`A. 
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`Claim 1 (Independent) ............................................................................................... 17
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`i
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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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`M. 
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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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`Claim 2 (Dependent) .................................................................................................. 29
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`Claim 3 (Dependent) .................................................................................................. 31
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`Claim 4 (Dependent) .................................................................................................. 34
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`Claim 5 (Dependent) .................................................................................................. 35
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`Claim 6 (Dependent) .................................................................................................. 36
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`Claim 7 (Dependent) .................................................................................................. 37
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`Claim 8 (Dependent) .................................................................................................. 38
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`Claim 9 (Dependent) .................................................................................................. 41
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`Claim 10 (Independent) ............................................................................................. 41
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`Claim 11 (Dependent) ................................................................................................ 47
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`Claim 12 (Dependent) ................................................................................................ 49
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`Claim 13 (Dependent) ................................................................................................ 49
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`Claim 14 (Dependent) ................................................................................................ 51
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`Claim 15 (Dependent) ................................................................................................ 51
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`Claim 16 (Dependent) ................................................................................................ 52
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`Claim 17 (Dependent) ................................................................................................ 53
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`Claim 18 (Dependent) ................................................................................................ 54
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`Claim 19 (Dependent) ................................................................................................ 55
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`T. 
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`Claim 20 (Independent) ............................................................................................. 55
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`VI.  CONCLUSION ..................................................................................................................... 60 
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`ii
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`On behalf of Garmin International, Inc. (“Garmin”) and in accordance with
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`35 U.S.C. § 311 and 37 C.F.R. § 42.100, inter partes review is respectfully
`
`requested for claims 1-20 of U.S. Patent No. 6,778,074 (“the ’074 Patent”) (Ex.
`
`1101).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`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. Garmin also identifies the following
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`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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`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.
`
`Garmin further advises that it filed a Request for Inter Partes Review of the
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`’074 Patent on September 16, 2012, which is now pending as IPR2012-00001 and
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`in which claims 10, 14, and 17 of the ’074 Patent are under review.
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`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) and
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Garmin provides the
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`
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`following designation of counsel and service information:
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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 Blvd., Suite 1000
`84 Corporate Woods
`Overland Park, Kansas 66210
`Telephone: (913) 647-9050
`Fax: (913) 647-9057
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Back-Up Counsel
`Jason R. Mudd (Reg. No. 57,700)
`Jason.Mudd@EriseIP.com
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
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`
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`
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`Petition.
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`
`2
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`

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`II. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`
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`inter partes review of the ’074 Patent is satisfied.
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`A. Certification of 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
`
`review and that the Petitioner is not barred or estopped from requesting inter partes
`
`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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`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 date of termination of any post-
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`grant review of the ’074 Patent.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`The precise relief requested by Garmin is that claims 1-20 of the ’074 Patent
`
`
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`are found unpatentable.
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`
`
`3
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`

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`1.
`
`Claims for Which Inter Partes Review Is Requested Under 37
`C.F.R. § 42.104(b)(1)
`
`Garmin requests inter partes review of claims 1-20 of U.S. Patent No.
`
`6,778,074.
`
`2.
`
`Identification of the Specific Art and Statutory Ground(s) on
`Which the Challenge Is Based Under 37 C.F.R. § 42.104(b)(2)
`
`Inter partes review of the ’074 Patent is requested in view of the following
`
`
`
`references: (1) Japanese Patent Application JP H05-067294 to Nagoshi (Ex. 1103)
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`published March 19, 1993, and prior art under § 102(b); (2) PCT Application No.
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`WO 01/28804 A1 to Hauler (Ex. 1106) published April 26, 2001, and prior art
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`under § 102(e); (3) U.S. Patent No. 5,485,161 to Vaughn (Ex. 1108) issued January
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`16, 1996, and prior art under § 102(b); (4) German Patent No. DE 197 55 470 A1
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`to Tegethoff (Ex. 1110) issued September 24, 1998, and prior art under § 102(b);
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`(5) U.S. Patent No. 3,980,041 to Evans (Ex. 1112) issued September 14, 1976, and
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`prior art under § 102(b); (6) U.S. Patent No. 2,711,153 to Wendt (Ex. 1113) issued
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`June 21, 1955, and prior art under § 102(b); and (7) U.S. Patent No. 6,522,381 to
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`Brandt (Ex. 1114) issued February 18, 2003, and prior art under § 102(e). Vaughn
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`was cited on the front face of the ’074 Patent but was not applied as the basis for a
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`rejection.
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`4
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`

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`Claim
`No.
`1
`1
`1
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`1
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`2
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`2
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`2
`3
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`3
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`4
`4
`5
`5
`6
`6
`7
`7
`8
`8
`9
`9
`10
`10
`11
`11
`12
`
`Proposed Statutory Rejections
`for the ’074 Patent
`Claim 1 is anticipated under § 102(b) by Nagoshi
`Claim 1 is anticipated under § 102(e) by Hauler
`Claim 1 is obvious under § 103(a) over Tegethoff in view of Vaughn
`and further in view of Evans and Wendt (applying the Board’s
`construction)
`Claim 1 is obvious under § 103(a) over Tegethoff in view of Vaughn
`(applying Cuozzo’s construction)
`Claim 2 is obvious under § 103(a) over Nagoshi in view of Vaughn
`(applying the Board’s construction)
`Claim 2 is obvious under § 103(a) over Nagoshi in view of Vaughn and
`further in view of Tegethoff (applying Cuozzo’s construction)
`Claim 2 is anticipated under § 102(e) by Hauler
`Claim 3 is obvious under § 103(a) over Nagoshi in view of Evans and
`further in view of Wendt and Hauler
`Claim 3 is obvious under § 103(a) over Hauler in view of Evans and
`further in view of Wendt
`Claim 4 is obvious under § 103(a) over Nagoshi in view of Evans
`Claim 4 is anticipated under § 102(e) by Hauler
`Claim 5 is obvious under § 103(a) over Nagoshi in view of Evans
`Claim 5 is anticipated under § 102(e) by Hauler
`Claim 6 is obvious under § 103(a) over Nagoshi in view of Tegethoff
`Claim 6 is anticipated under § 102(e) by Hauler
`Claim 7 is anticipated under § 102(b) by Nagoshi
`Claim 7 is anticipated under § 102(e) by Hauler
`Claim 8 is obvious under § 103(a) over Nagoshi in view of Vaughn
`Claim 8 is obvious under § 103(a) over Hauler in view of Vaughn
`Claim 9 is anticipated under § 102(b) by Nagoshi
`Claim 9 is anticipated under § 102(e) by Hauler
`Claim 10 is anticipated under § 102(b) by Nagoshi
`Claim 10 is obvious under § 103(a) over Hauler in view of Vaughn
`Claim 11 is obvious under § 103(a) over Nagoshi in view of Vaughn
`Claim 11 is obvious under § 103(a) over Hauler in view of Vaughn
`Claim 12 is obvious under § 103(a) over Nagoshi in view of Vaughn
`(applying the Board’s construction)
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`
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`5
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`

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`Claim
`No.
`12
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`12
`13
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`13
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`13
`14
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`14
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`15
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`15
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`16
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`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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`20
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`Proposed Statutory Rejections
`for the ’074 Patent
`Claim 12 is obvious under § 103(a) over Nagoshi in view of Vaughn
`and further in view of Tegethoff (applying Cuozzo’s construction)
`Claim 12 is obvious under § 103(a) over Hauler in view of Vaughn
`Claim 13 is obvious under § 103(a) over Nagoshi in view of Vaughn
`(applying the Board’s construction)
`Claim 13 is obvious under § 103(a) over Nagoshi in view of Vaughn
`and further in view of Tegethoff (applying Cuozzo’s construction)
`Claim 13 is obvious under § 103(a) over Hauler in View of Vaughn
`Claim 14 is obvious under § 103(a) over Nagoshi in view of Evans and
`further in view of Wendt and Hauler
`Claim 14 is obvious under § 103(a) over Hauler in view of Vaughn and
`further in view of Evans and Wendt
`Claim 15 is obvious under § 103(a) over Nagoshi in view of Evans
`further in view of Wendt and Hauler
`Claim 15 is obvious under § 103(a) over Hauler in view of Vaughn and
`further in view of Evans and Wendt
`Claim 16 is obvious under § 103(a) over Nagoshi in view of Evans and
`further in view of Wendt and Hauler
`Claim 16 is obvious under § 103(a) over Hauler in view of Vaughn and
`Evans and further in view of Evans and Wendt
`Claim 17 is obvious under § 103(a) over Nagoshi in view of Evans and
`further in view of Wendt and Hauler
`Claim 17 is obvious under § 103(a) over Hauler in view of Vaughn and
`further in view of Evans and Wendt
`Claim 18 is obvious under § 103(a) over Nagoshi in view of Tegethoff
`Claim 18 is obvious under § 103(a) over Hauler in view of Vaughn
`Claim 19 is anticipated under § 102(b) by Nagoshi
`Claim 19 is obvious under § 103(a) over Hauler in view of Vaughn
`Claim 20 is obvious under § 103(a) over Nagoshi in view of Vaughn
`Claim 20 is obvious under § 103(a) over Hauler in view of Vaughn
`Claim 20 is obvious under § 103(a) over Tegethoff in view of Vaughn
`and further in view of Nagoshi, Evans, and Wendt (applying the Board’s
`construction)
`Claim 20 is obvious under § 103(a) over Tegethoff in view of Vaughn
`and further in view of Nagoshi (applying Cuozzo’s construction)
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`
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`6
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`

`Garmin also submits that because each dependent claim includes all of the
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`features of the claims on which it depends, each of the proposed rejections for a
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`dependent claim is also applicable to any preceding claim. Thus, for example,
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`because claim 2 is obvious over Nagoshi in view of Vaughn and claim 2 depends
`
`from claim 1, claim 1 is also obvious over Nagoshi in view of Vaughn.
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`3. How the Challenged Claim(s) Are to Be Construed Under 37
`C.F.R. § 42.104(b)(3)
`
`Garmin submits that “integrally attached,” as recited in claims 1 and 10 and
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`via incorporation by reference in claim 20, should be construed as “two elements
`
`being discrete parts physically joined together as a unit without each part losing its
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`own separate identity.” This is the Board’s construction from IPR2012-00001
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`(“IPR1”). (IPR1, Paper 15 at 8.) Cuozzo has proffered “integrally attached” means
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`the speedometer and colored display are “joined or combined to work as a
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`complete unit.” (IPR1, Paper 31 at 3.) Of note is that Cuozzo is attempting to have
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`a construction that covers an electronic embodiment of a single electronic display
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`that itself serves as both the speedometer and the colored display. However,
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`Cuozzo’s construction renders the claims of the ’074 Patent unpatentable. In fact,
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`and has been repeatedly submitted by Garmin in IPR1, revising the Board’s
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`construction to adopt Cuozzo’s proposed construction in IPR1 would present a
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`great injustice to Garmin. The Board rejected the initiation of most of IPR1’s
`7
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`

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`proposed rejections based on the Board’s construction. Should the Board again
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`reject a construction that covers an electronic embodiment for institution of this
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`IPR and then adopt a construction that covers an electronic embodiment for a final
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`construction, Garmin is unfairly and significantly prejudiced. Thus, Garmin
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`respectfully requests the Board determine institution of this IPR based on a
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`construction that ultimately is the final construction.
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`Garmin submits the Board’s construction is correct. Claim 10 of the ’074
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`Patent does not merely recite an “integrated” speedometer and colored display, as
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`Cuozzo’s construction proposes. Rather, claim 10 recites a speedometer “integrally
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`attached” to a colored display, meaning that each of these two components has a
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`separate identity. Cuozzo’s construction reads out the requirement that the
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`components be “attached.” Further, if they were merged into a single, indivisible
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`electronic display, as proposed by Cuozzo, the claimed colored display being
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`“adjusted independently of the speedometer” would be meaningless.
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`Second, the ’074 Patent consistently describes the colored display and
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`speedometer as separate components that are attached. (IPR1, Paper 15 at 8; Ex.
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`1101 at 5:9–12.) Cuozzo proffers in IPR1 that the two components can be
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`“integrated” because the specification discusses a speedometer that “has” a colored
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`display. (IPR, Paper 31 at 3–4 (citing Ex. 1101 at 5:8–10).) But this disclosure is
`
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`8
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`

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`entirely consistent with a speedometer that has an attached colored display and
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`never suggests that the two components are merged into a single, indivisible
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`electronic display. Indeed, the specification never once discloses a single electronic
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`display that itself operates as both a speedometer and a colored display.
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`Third, importantly, when Cuozzo amended the claims to add the “integrally
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`attached” requirement, he cited to these very same portions of the specification that
`
`describe the speedometer and colored display as separate and discrete elements.
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`(IPR1, Paper 15 at 8 (citing Ex. 1101 at 7:23–25).) Indeed, Cuozzo concedes in
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`IPR1 that this disclosure describes the components “as separate and discrete
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`elements.” (IPR1, Paper 31 at 6.) This is further evidence that Cuozzo’s proposed
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`construction from IPR1 of “joined or combined to work as a complete unit” is
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`incomplete and overbroad, because it captures only the “integrally” aspect of the
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`limitation and reads out the “attached” requirement. The Board’s construction
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`properly requires that each part retain its own separate identity.
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`Cuozzo’s reliance in IPR1 on claim differentiation also fails. (IPR1, Paper
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`31 at 9–13.) Cuozzo and its expert, Dr. Morris, rely on dependent claims 12 and 18
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`to argue that the ’074 Patent discloses an “electronic embodiment” of the invention
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`in which a single electronic display operates as both a speedometer and a colored
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`display. (IPR1, Paper 31 at 5; IPR1, Ex. 2002 at ¶¶ 23, 28, 29 (opining that
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`9
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`

`

`electronic embodiment is “implie[d]” and it would be “natural” to combine both on
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`a single LCD).) Garmin respectfully disagrees. Claim 18 does not depend from
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`claim 12 and thus does not disclose that the speedometer comprises the same LCD
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`that is the colored display in claim 12. And notably, while claim 12 recites that the
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`colored display “is” an LCD, claim 18 uses different language, namely that the
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`speedometer “comprises” an LCD.1 This means the speedometer includes, but is
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`not limited to, an LCD. CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360
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`(Fed. Cir. 2007) (“In the patent claim context the term ‘comprising’ is well
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`understood to mean ‘including but not limited to.’”). This claim language is
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`entirely consistent with the Board’s construction and the specification in which the
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`speedometer can be integrally attached to an LCD but nonetheless remains a
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`separate component that retains its own identity and is not itself an LCD.
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`4. How the Construed Claim(s) Are Unpatentable Under 37
`C.F.R. § 42.104(b)(4)
`
`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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`1 An exemplary embodiment where the speedometer “comprises” the LCD and the
`colored display “is” the LCD is the LCD sitting behind a mechanical speedometer
`needle and the LCD displaying the speed scale and changing colors as the speed
`limit changes, such as taught by Hauler. (Ex. 1106 at 6, ¶ 3.)
`10
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`

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`identification of where each element of the claim is found in the prior art patents or
`
`printed publications, is provided in Section V, below, in the form of claims charts.
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`5.
`
`Supporting Evidence Under 37 C.F.R. § 42.104(b)(5)
`
`The exhibit numbers of the supporting evidence relied upon to support the
`
`
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge, are
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`provided in Section V, below, in the form of claim charts. An Appendix of
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`Exhibits identifying the exhibits is also attached, including Affidavits attesting to
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`the accuracy of certain translations, pursuant to 37 C.F.R. § 42.63(b).
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`III. SUMMARY OF THE ’074 PATENT
`
`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. (Ex. 1101, Abstract.) A
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`speedometer 12 mounted on a dashboard 26 displays the speed limit 10. (Ex. 1101
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`at 5:6-9.) The speedometer 12 has a backplate 14, speed denoting markings 16
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`painted on the backplate 14, a needle 20 rotatably mounted in the center of
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`backplate 14, and “a colored display 18 made of a red plastic filter.” (Ex. 1101 at
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`5:9-11.)
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`
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`11
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`

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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.” (Ex. 1101 at 5:25-26.) 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.” (Ex. 1101 at 5:27-29.) 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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`generator 46 to generate a tone in the event that the vehicle’s speed exceeds the
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`relevant speed limit.” (Ex. 1101 at 5:29-33.)
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`
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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.” (Ex. 1101 at 5:35-39.) Thus, the red-colored filter 18
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`rotates according to the uploaded speed limit information. The ’074 Patent further
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`briefly states that “the colored display herein described could also take the form of
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`a liquid crystal display.” (Ex. 1101 at 6:12-14.)
`
`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
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`included claims 1-20, of which claims 1, 11, and 20 were independent.
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`12
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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
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`17 under 35 U.S.C. § 103(a) as being obvious over Awada in view of U.S. Patent
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`No. 4,935,850 to Smith, Jr. (“Smith”). Responsive to the non-final Office Action,
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`an Amendment was filed on November 9, 2003, that contained a formatting error.
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`On January 9, 2004, a supplemental amendment (the “Corrected Amendment”)
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`was filed that amended claims 1, 3-12, and 14-20, canceled claims 2 and 13, and
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`added claims 21 and 22. (Ex. 1115 at 2-5.) The Patent Owner argued that amended
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`independent claim 1 was not anticipated by Awada because:
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`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.
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`13
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`Id. at 6 (emphases added.) Thus, the Patent Owner overcame Awada by arguing
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`that the speed limit and the current speed were displayed, such that the driver does
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`not have to look in two different places on the dashboard and further so the driver
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`can see how close he is to speeding (i.e., the relative difference between the speed
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`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 7.
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`A Notice of Allowance dated February 18, 2004, was mailed in response to
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`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
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`issued on August 17, 2004.
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`IV. 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)
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`As specifically set forth in the below claims charts, the proposed rejections
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`
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`cite art that anticipates or renders obvious at least one claim of the ’074 Patent. For
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`example, Nagoshi discloses a speed limit indicator comprising a band of green and
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`red LEDs concentrically mounted about a speedometer dial. Applying the Board’s
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`construction from IPR1, there is a reasonable likelihood that Nagoshi alone renders
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`independent claims 1 and 10 unpatentable, as the colored LEDs and speedometer
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`are discrete elements physically joined together as a unit. Moreover, neither the
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`speedometer nor the colored concentric band of LEDs lose their separate identity—
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`the LEDs retain their identity as a colored band to indicate whether a speed is
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`below or above the speed limit, and the speedometer retains its identity as a speed-
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`disclosing device. However, the two components are joined together to display to a
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`driver of a vehicle the speed, the speed limit, and the relation of the speed to the
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`speed limit.
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`
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`Hauler, also fully discussed below, discloses two separate embodiments of a
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`speed limit indicator, namely a fully-electronic embodiment where both the speed
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`limit and the speed are graphically displayed on an LCD, and an electromechanical
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`embodiment where a mechanical, motor-actuated speedometer needle is integrally
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`attached and mounted with an LCD. Thus, Hauler discloses embodiments that
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`satisfy either of the Board’s or Cuozzo’s construction.
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`As set forth below, regardless of the final construction adopted by the Board,
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`the art discloses a speedometer “integrally attached” with a colored display for
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`indicating to a driver speed readings in excess of a speed limit at the vehicle’s
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`current location. Moreover, the art even discloses the key feature that resulted in
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`allowance of the ’074 Patent, namely displaying vehicle speed and its proximal
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`relationship to the speed limit so that the driver can “immediately ascertain both
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`his speed and its relation to the prevailing speed limit” without having to perform a
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`mental comparison. (Ex. 1115 at 6). For example, both Nagoshi and Hauler
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`disclose colored displays that allow the driver to see the relationship of the current
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`vehicle speed to the speed limit, i.e., how near the current vehicle speed is to the
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`speed limit.
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`
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`Garmin also even cites art that discloses a colored display that is a red
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`plastic filter, i.e., the same embodiment disclosed in the ’074 Patent. In particular,
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`the combination of Evans and Wendt teaches a rotatable colored plate for
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`indicating the speed limit. As established below, it would have been obvious to one
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`of ordinary skill in the art to mount the rotatable colored plate to the glass cover of
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`either of a conventional analog vehicle speedometer or the glass cover of an LCD
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`that is graphically representing the speedometer dial.
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`
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`In sum, Garmin cites below a variety of prior art references that teaches or in
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`combination renders obvious the claimed speed limit indicator and regardless of
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`any final constructions that may cover an electrical, a mechanical, or an
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`16
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`electromechanical embodiment. As such, there is a reasonable likelihood that at
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`least one claim of the ’074 Patent, regardless of the final claim construction, is
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`unpatentable.
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`V. DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b)
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`A. Claim 1 (Independent)
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`Anticipated By Nagoshi (Ex. 1103)
`A speed limit indicator comprising:
`Nagoshi discloses a “vehicle speed limit warning device.” (Title, ¶ 0006.) The
`stated “Purpose” of Nagoshi’s invention is “to make the driver aware of the
`speed limit of the road, no matter what road is being driven.” (Summary, p. 1.)
`a colored display to delineate which speed readings are in violation of the
`speed limit at a vehicle's current location;
`Nagoshi discloses a “display apparatus 13 [that] displays the speed limit
`information acquired from said microcomputer 12.” (¶¶ 0014–0015.) The speed
`limit information is “of the road where the driver is driving at present by means
`of the coordinates information of the current vehicle location from the navigation
`system 11 . . . .” (Summary, p. 1; see also ¶¶ 0006, 0012, 0014.)
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`Nagoshi’s display apparatus is a colored display. In particular, the display
`apparatus 13 displays the speed readings in green or red depending on whether
`the speed reading is below or above a speed limit. (¶ 0016.) Nagoshi teaches that
`the speed limit information can be both alphanumerically displayed as part of the
`speedometer, and further that “the driver is informed of the speed limit of the
`road currently being driven by the display green LEDs of the velocities below the
`speed limit on the outer side of the speedometer, and the velocities above the
`speed limit in red.” (¶ 0016; Fig. 5.) Thus, as shown in Fig. 5 below, for speeds
`below the speed limit of 40 km/h, a concentric region of LEDs surrounding the
`speed denoting markings of 40 km/h and below are colored green, and a region
`of LEDs surrounding the speed denoting markings above 40 km/h are colored
`red.
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`17
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`Nagoshi thus discloses a colored display, namely the green and red LEDs, and
`the colored LEDs delineate the speed readings in violation of the speed limit at
`the vehicle’s current location.
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`Garmin notes that in ¶ 0016, Nagoshi references Fig. 4, which illustrates lead
`lines for “green” and “red” but that does not expressly show the green region
`shaded below 40 km/h, as it is in Fig. 5. One of ordinary skill in the art (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.
`a speedometer integrally attached to said colored display;
`Nagosh