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 IPR: 2013-00373
`
`Patent 6,778,074
`
`____________
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`UNDER 37 C.F.R. § 42.100
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`

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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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`Related Matters Under 37 C.F.R. § 42.8(b)(2) .......................................... 1
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`A. 
`
`B. 
`
`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) ................................................ 2
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`II.  REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104 ............................................................................................................. 2
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`A. 
`
`Certification of Grounds for Standing Under 37 C.F.R. § 42.104(a) ........ 2
`
`B. 
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
` Requested .................................................................................................... 3
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`1.   Claims for Which Inter Partes Review Is Requested Under
`37 C.F.R. § 42.104(b)(1) ........................................................................... 3
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`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) ................................ 3
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`3.   How the Challenged Claim(s) Are to Be Construed Under
`37 C.F.R. § 42.104(b)(3) ........................................................................... 6
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`4.  How the Construed Claim(s) Are Unpatentable and Supporting Evidence
`Under 37 C.F.R. § 42.104(b)(4), (5) ....................................................... 10
`
`
`III. SUMMARY OF THE ’074 PATENT .............................................................. 10
`
`
`A. 
`
`Description of the Alleged Invention of the ’074 Patent ........................ 10
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`B. 
`
`Summary of the Prosecution History of the ’074 Patent ......................... 11
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`i
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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) ................................................................................... 13
`
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`V.  DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b) .................... 15
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`A. 
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`Claim 1 (Independent) ............................................................................. 15
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`B. 
`
`C. 
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`D. 
`
`E. 
`
`F. 
`
`G. 
`
`H. 
`
`I. 
`
`J. 
`
`K. 
`
`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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`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) ............................................................................... 36
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`Claim 6 (Dependent) ............................................................................... 36
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`Claim 7 (Dependent) ............................................................................... 38
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`Claim 8 (Dependent) ............................................................................... 39
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`Claim 9 (Dependent) ............................................................................... 42
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`Claim 10 (Independent) ........................................................................... 42
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`Claim 11 (Dependent) ............................................................................. 49
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`Claim 12 (Dependent) ............................................................................. 50
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`Claim 13 (Dependent) ............................................................................. 50
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`Claim 14 (Dependent) ............................................................................. 52
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`Claim 15 (Dependent) ............................................................................. 52
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`Claim 16 (Dependent) ............................................................................. 53
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`ii
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`Q. 
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`R. 
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`S. 
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`Claim 17 (Dependent) ............................................................................. 54
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`Claim 18 (Dependent) ............................................................................. 55
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`Claim 19 (Dependent) ............................................................................. 56
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`T. 
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`Claim 20 (Independent) ........................................................................... 56
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`VI.  CONCLUSION ................................................................................................. 60 
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`iii
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`APPENDIX OF EXHIBITS
`
`
`Statement of Relevance
`Patent at issue
`
`Description
`Exhibit
`1101 U.S.P.N. 6,778,074
`to Cuozzo
`JP H05-067294 to
`Nagoshi (Japanese)
`JP H05-067294 to
`Nagoshi (English)
`1104 Affidavit of
`Michael O’Keeffe
`
`1102
`
`1103
`
`Invalidating prior art to the challenged
`claims
`English translation of invalidating prior art
`to the challenged claims
`Affidavit of Michael O’Keeffe attesting to
`the accuracy of the translation of the prior
`art Nagoshi reference from Japanese to
`English
`Invalidating prior art to the challenged
`claims
`English translation of invalidating prior art
`to the challenged claims
`Affidavit of Lily Huberman attesting to the
`accuracy of the translation of the prior art
`Hauler reference from German to English
`Invalidating prior art to the challenged
`claims
`Invalidating prior art to the challenged
`claims
`
`English translation of invalidating prior art
`to the challenged claims
`
`Affidavit of Joyce Chen attesting to the
`accuracy of the translation of the prior art
`Tegethoff reference from German to
`English
`Invalidating prior art to the challenged
`claims
`Invalidating prior art to the challenged
`claims
`
`Filed
`
`☒
`
`☒
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`☒
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`☒
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`☒
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`☒
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`☒
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`☒
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`☒
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`☒
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`☒
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`☒
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`☒
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`1105 WO 01/28804 A1
`to Hauler (German)
`1106 WO 01/28804 A1
`to Hauler (English)
`1107 Affidavit of Lily
`Huberman
`
`1108 U.S.P.N. 5,485,161
`to Vaughn
`1109 DE 197 55470 A1
`to Tegethoff
`(German)
`1110 DE 197 55470 A1
`to Tegethoff
`(English)
`1111 Affidavit of Joyce
`Chen
`
`1112 U.S.P.N. 3,980,041
`to Evans
`1113 U.S.P.N. 2,711,153
`to Wendt
`
`
`
`iv
`
`

`

`Description
`Exhibit
`1114 U.S.P.N. 6,522,381
`to Brandt
`1115 Corrected
`Amendment from
`Prosecution of ’074
`Patent
`
`Statement of Relevance
`Invalidating prior art to the challenged
`claims
`Patent Owner’s purported distinctions over
`prior art
`
`Filed
`
`☒
`
`☒
`
`
`
`v
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`

`

`On behalf of Garmin International, Inc. (“Garmin”) and in accordance with
`
`35 U.S.C. § 311 and 37 C.F.R. § 42.100, inter partes review is 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
`
`mandatory notices are provided as part of this Petition.
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`Garmin International, Inc. and Garmin USA, Inc. are the real parties-in-
`
`interest for Petitioner.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ’074 Patent is the subject of a patent infringement lawsuit brought by
`
`the assignee, Cuozzo Speed Technologies LLC, against Garmin International, Inc.
`
`and Garmin USA, Inc. and captioned Cuozzo Speed Technologies LLC v. Garmin
`
`International Inc. et al., USDC District of New Jersey, Case No.: 2:12-cv-03623-
`
`CCC-JAD. Garmin also identifies the following judicial proceedings that may
`
`affect, or be affected by, a decision in this proceeding: (1) Cuozzo Speed
`
`Technologies LLC v. General Motors Company, USDC District of New Jersey,
`
`Case No.: 2:12-cv-03624-CCC-JAD; (2) Cuozzo Speed Technologies LLC v. JVC
`
`Americas Corporation, USDC District of New Jersey, Case No.: 2:12-cv-03625-
`
`
`
`1
`
`

`

`CCC-JAD; and (3) Cuozzo Speed Technologies LLC v. TomTom, Inc. et al., USDC
`
`District of New Jersey, Case No.: 2:12-cv-03626-CCC-JAD.
`
`Garmin further advises that it filed a Request for Inter Partes Review of the
`
`’074 Patent on September 16, 2012, which is now pending as IPR2012-00001 and
`
`in which claims 10, 14, and 17 of the ’074 Patent are under review.
`
`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
`
`
`
`following designation of counsel and service information:
`
`Lead Counsel
`Jennifer C. Bailey (Reg. No. 52,583)
`HOVEY WILLIAMS LLP
`10801 Mastin Blvd., Suite 1000
`Overland Park, Kansas 66210
`jcb@hoveywilliams.com
`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)
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Jason.Mudd@EriseIP.com
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`
`
`Petition.
`
`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
`
`inter partes review of the ’074 Patent is satisfied.
`
`A. Certification of Grounds for Standing Under 37 C.F.R. § 42.104(a)
`2
`
`
`
`

`

`
`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.
`
`The estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit inter partes
`
`review, and the Complaint served on Garmin in the above-referenced litigation was
`
`served within one year from the original June 20, 2013, filing date of this Petition.
`
`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
`
`
`
`are found unpatentable.
`
`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)
`
`published March 19, 1993, and prior art under § 102(b); (2) PCT Application No.
`
`WO 01/28804 A1 to Hauler (Ex. 1106) published April 26, 2001, and prior art
`
`
`
`3
`
`

`

`under § 102(e); (3) USPN 5,485,161 to Vaughn (Ex. 1108) issued January 16,
`
`1996, and prior art under § 102(b); (4) German Patent No. DE 197 55 470 A1 to
`
`Tegethoff (Ex. 1110) issued September 24, 1998, and prior art under § 102(b); (5)
`
`USPN 3,980,041 to Evans (Ex. 1112) issued September 14, 1976, and prior art
`
`under § 102(b); (6) USPN 2,711,153 to Wendt (Ex. 1113) issued June 21, 1955,
`
`and prior art under § 102(b); and (7) USPN 6,522,381 to Brandt (Ex. 1114) issued
`
`February 18, 2003, and prior art under § 102(e). Vaughn was cited on the front
`
`face of the ’074 Patent but was not applied as the basis for a rejection.
`
`Claim
`No.
`1
`1
`1
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`1
`
`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
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`
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`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
`4
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`

`

`6
`6
`7
`7
`8
`8
`9
`9
`10
`10
`11
`11
`12
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`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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`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)
`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
`
`
`
`5
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`

`

`18
`18
`19
`19
`20
`20
`
`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
`
`
`Garmin also submits that because each dependent claim includes all of the
`
`features of the claim(s) on which it depends, each of the proposed rejections for a
`
`dependent claim is also applicable to any preceding claim. Thus, for example,
`
`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.
`
`3. How the Challenged Claim(s) Are to Be Construed Under 37
`C.F.R. § 42.104(b)(3)
`
`A claim subject to inter partes review receives the “broadest reasonable
`
`
`
`construction in light of the specification of the patent in which it appears.” 42
`
`C.F.R. § 42.100(b). For the purposes of the IPR, the claim terms are presumed to
`
`take on their ordinary and customary meaning that the term would have to one of
`
`ordinary skill in the art. Additionally, Garmin submits that “integrally attached,” as
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`recited in claims 1 and 10 and 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 own separate identity.” This is the Board’s
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`
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`6
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`

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`construction from IPR2012-00001 (“IPR1”) (IPR1, Paper 15 at 8), which is the
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`broadest reasonable construction.
`
`Cuozzo has proffered “integrally attached” means the speedometer and
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`colored display are “joined or combined to work as a complete unit.” (IPR1, Paper
`
`31 at 3.) Of note is that Cuozzo is attempting to have a construction that covers an
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`electronic embodiment of a single electronic display that itself serves as both the
`
`speedometer and the colored display. This construction renders the claims
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`unpatentable. If the Board adopts Cuozzo’s proposed construction in IPR1 (and
`
`without otherwise expanding the scope of IPR1), Garmin is substantially
`
`prejudiced, as the Board rejected most of IPR1’s proposed rejections based on its
`
`construction. Should the Board again reject a construction that covers an electronic
`
`embodiment for institution of this IPR, which Garmin submits the Board should
`
`do, then Garmin respectfully requests the Board determine such that a construction
`
`for institution of this IPR is the final construction.
`
`Garmin submits the Board’s construction is correct. First, claim 10 of the
`
`’074 Patent does not merely recite an “integrated” speedometer and colored
`
`display. Rather, claim 10 recites a speedometer “integrally attached” to a colored
`
`display, meaning each component has a separate identity. Cuozzo’s construction
`
`reads out the requirement that the components be “attached.” Further, if they were
`
`
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`7
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`

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`merged into a single electronic display, as proposed by Cuozzo, the claimed
`
`colored display being “adjusted independently of the speedometer” is meaningless.
`
`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
`
`“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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`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 “integrally
`
`attached,” he cited to these very same portions of the specification that describe the
`
`speedometer and colored display as separate and discrete elements. (IPR1, Paper
`
`15 at 8 (citing Ex. 1101 at 7:23–25).) Indeed, Cuozzo concedes in IPR1 that this
`
`disclosure describes the components “as separate and discrete elements.” (IPR1,
`
`Paper 31 at 6.) Thus, Cuozzo’s proposed construction from IPR1 is incomplete and
`
`overbroad because it captures only the “integrally” aspect of the limitation and
`
`reads out the “attached” requirement.
`
`
`
`8
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`

`

`Cuozzo’s reliance in IPR1 on claim differentiation also fails. (IPR1, Paper
`
`31 at 9–13.) Cuozzo and its expert, Dr. Morris, rely on dependent claims 12 and 18
`
`to argue that the ’074 Patent discloses an “electronic embodiment” of the invention
`
`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 an
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`electronic embodiment is “implie[d]” and it would be “natural” to combine both on
`
`a single LCD).) Claim 18 does not depend from claim 12 and thus does not
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`disclose that the speedometer comprises the same LCD that is the colored display.
`
`And notably, while claim 12 recites that the colored display “is” an LCD, claim 18
`
`uses different language, namely that the speedometer “comprises” an LCD.1 This
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`means the speedometer includes, but is not limited to, an LCD. This claim
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`language is entirely consistent with the Board’s construction and the specification
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`in which the speedometer can be integrally attached to an LCD but nonetheless
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`remains a separate component that retains its own identity and is not itself an LCD.
`
`
`1 An exemplary embodiment where the speedometer “comprises” the LCD and the
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`colored display “is” the LCD is the LCD sitting behind a mechanical speedometer
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`needle and the LCD displaying the speed scale and changing colors as the speed
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`limit changes, such as taught by Hauler. (Ex. 1106 at 6, ¶ 3.)
`
`
`
`9
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`

`

`4. How
`the Construed Claim(s) Are Unpatentable and
`Supporting Evidence Under 37 C.F.R. § 42.104(b)(4), (5)
`
`The following requirements are provided in Section V, below: (1) an
`
`explanation of how construed claims 1-20 of the ’074 Patent are unpatentable
`
`under the statutory grounds identified above, including the identification of where
`
`each element of the claim is found in the prior art patents or printed publications;
`
`and (2) 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.
`
`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
`
`
`
`of a vehicle and the speed limit corresponding to the vehicle’s current location and
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`for displaying the speed and speed limit to the driver. (Ex. 1101, Abstract.) A
`
`speedometer 12 displays the speed limit 10. (Ex. 1101 at 5:6-9.) The speedometer
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`12 has a backplate 14, speed denoting markings 16 painted on the backplate 14, a
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`needle 20 rotatably mounted in the center of backplate 14, and “a colored display
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`18 made of a red plastic filter.” (Ex. 1101 at 5:9-11.)
`
`
`
`To obtain speed limit information, uploading unit 38 “uploads current data
`
`to a regional speed limit database 40.” (Ex. 1101 at 5:25-26.) A global positioning
`10
`
`
`
`

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`receiver 22 determines the vehicle location and “identifies the relevant speed limit
`
`from the database for that location.” (Ex. 1101 at 5:27-29.) The GPS receiver
`
`“compares the vehicle’s speed and the relevant speed limit 44, and uses a tone
`
`generator 46 to generate a tone in the event that the vehicle’s speed exceeds the
`
`relevant speed limit.” (Ex. 1101 at 5:29-33.)
`
`
`
`The colored display 8 is adjusted via a control unit “so that the speeds above
`
`the legal speed limit are displayed in red 50 while the legal speeds are displayed in
`
`white 52. This is accomplished by the control unit rotating the red filter disc 54 to
`
`the appropriate degree.” (Ex. 1101 at 5:35-39.) Thus, the red-colored filter 18
`
`rotates according to the uploaded speed limit information. The ’074 Patent further
`
`briefly states that “the colored display herein described could also take the form of
`
`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
`
`
`
`20 claims, of which claims 1, 10, and 20 are independent. The ’074 Patent as filed
`
`included claims 1-20, of which claims 1, 11, and 20 were independent.
`
`
`
`A non-final Office Action was mailed on October 3, 2003, and rejected
`
`claims 1-3, 7-14, 18, 19, and 20 under 35 U.S.C. § 102(e) as being anticipated by
`
`U.S. Patent No. 6,515,696 to Awada (“Awada”); claims 3, 4, 7, 14, 15, and 18
`
`
`
`11
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`

`

`under 35 U.S.C. § 103(a) as being obvious over Awada; and claims 5, 6, 16, and
`
`17 under 35 U.S.C. § 103(a) as being obvious over Awada in view of U.S. Patent
`
`No. 4,935,850 to Smith, Jr. (“Smith”). Responsive to the non-final Office Action,
`
`an Amendment was filed on November 9, 2003, that contained a formatting error.
`
`On January 9, 2004, a supplemental amendment (the “Corrected Amendment”)
`
`was filed that amended claims 1, 3-12, and 14-20, canceled claims 2 and 13, and
`
`added claims 21 and 22. (Ex. 1115 at 2-5.) The Patent Owner argued that amended
`
`independent claim 1 was not anticipated by Awada because:
`
`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.
`
`
`Id. at 6 (emphases added.) Thus, the Patent Owner overcame Awada by arguing
`
`that the speed limit and the current speed were displayed, such that the driver does
`
`not have to look in two different places on the dashboard and further so the driver
`
`
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`12
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`

`

`can see how close he is to speeding (i.e., the relative difference between the speed
`
`and the speed limit).
`
`
`
`The Patent Owner further commented on the independent adjustment of the
`
`colored display with respect to the speedometer. In arguing over Smith, the Patent
`
`Owner noted that Smith’s interrupter plate “rotates in conjunction with the
`
`speedometer needle axis,” whereas “the colored display of the present invention
`
`adjusts independently of the speedometer by rotation of a colored filter by the
`
`display controller.” Id. at 7.
`
`
`
`A Notice of Allowance dated February 18, 2004, was mailed in response to
`
`the Corrected Amendment and identified claims 1, 3-12, and 14-22 as allowable.
`
`No comments on allowance were provided by the Examiner. The ’074 Patent
`
`issued on August 17, 2004.
`
`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)
`
`The proposed rejections cite art that anticipates or renders obvious at least
`
`
`
`one claim of the ’074 Patent. For example, Nagoshi discloses a speed limit
`
`indicator comprising a band of green and red LEDs concentrically mounted about a
`
`speedometer dial. Applying the Board’s construction from IPR1, there is a
`
`reasonable likelihood that Nagoshi alone renders independent claims 1 and 10
`
`
`
`13
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`

`

`unpatentable, as the colored LEDs and speedometer are discrete elements
`
`physically joined together as a unit. Moreover, neither the speedometer nor the
`
`colored concentric band of LEDs loses their separate identity—the LEDs retain
`
`their identity as a colored band to indicate whether a speed is below or above the
`
`speed limit, and the speedometer retains its identity as a speed-disclosing device.
`
`However, the two components are joined together to display to a driver of a vehicle
`
`the speed, the speed limit, and the relation of the speed to the speed limit.
`
`
`
`Hauler discloses two separate embodiments of a speed limit indicator,
`
`namely a fully-electronic embodiment where both the speed limit and the speed are
`
`graphically displayed on an LCD, and an electromechanical embodiment where a
`
`mechanical, motor-actuated speedometer needle is integrally attached and mounted
`
`with an LCD. Thus, Hauler discloses embodiments that satisfy either of the
`
`Board’s or Cuozzo’s construction.
`
`
`
`The art even discloses the key feature that resulted in allowance of the ’074
`
`Patent, namely displaying vehicle speed and its proximal relationship to the speed
`
`limit so that the driver can “immediately ascertain both his speed and its relation to
`
`the prevailing speed limit” without having to perform a mental comparison. (Ex.
`
`1115 at 6). For example, both Nagoshi and Hauler disclose colored displays that
`
`
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`14
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`

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`allow the driver to see the relationship of the current vehicle speed to the speed
`
`limit, i.e., how near the current vehicle speed is to the speed limit.
`
`
`
`The prior art also discloses a colored display that is a red plastic filter, i.e.,
`
`the same embodiment disclosed in the ’074 Patent. In particular, the combination
`
`of Evans and Wendt teaches a rotatable colored plate for indicating the speed limit.
`
`
`
`In sum, Garmin cites below a variety of prior art references that teaches or in
`
`combination renders obvious the claimed speed limit indicator and regardless of
`
`any final constructions that may cover an electrical, a mechanical, or an
`
`electromechanical embodiment. As such, there is a reasonable likelihood that at
`
`least one claim of the ’074 Patent is unpatentable under either construction.
`
`V. DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b)
`
`A. Claim 1 (Independent)
`
`Claim 1
`A speed limit
`indicator
`comprising:
`
`Anticipated By Nagoshi (Ex. 1103)
`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.)
`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.)
`Nagoshi’s display apparatus is a colored display. In
`particular, the display apparatus 13 displays the speed readings
`15
`
`a colored
`display to
`delineate which
`speed readings
`are in violation
`of the speed
`limit at a
`vehicle's
`current
`
`
`
`

`

`location;
`
`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.
`
`
`
`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.
`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.
`Nagoshi discloses a speedometer 17, and the speed limit
`information is “displayed as part of the speedometer.” (¶ 0016;
`Fig. 5, illustrating a circular speedometer dial with a needle and
`speed denoting markings; ¶ 0020, referring to the “speedometer
`display” of Figs. 4 and 5.)
`Analysis Under the Board’s Construction: Nagoshi teaches
`that the speedometer of Fig. 5 is integrally attached to the
`colored LEDs comprising the colored display. Applying the
`Board’s construction, the speedometer dial with its needle and
`speed denoting markings is a discrete part from the colored
`16
`
`a speedometer
`integrally
`attached to said
`colored
`display;
`
`
`
`

`

`LEDs, i.e., the LEDs are separate and distinct from the needle
`and speed denoting markings of th