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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GARMIN INTERNATIONAL ET AL.
`Petitioners
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`v.
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`Patent of CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
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`
`Case IPR2013-00373
`Patent 6,778,074
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`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,778,074
`UNDER 35 USC §§ 311-319 AND 37 CFR §42.100 ET SEQ.
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`Table of Contents
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`1. Introduction. ........................................................................................... 1
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`2. Garmin’s Second IPR is Entirely Duplicative of Its First IPR .......... 3
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`3. Garmin’s Moving Target Claim Constructions Render Its Second
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`IPR Overly Burdensome .............................................................................. 5
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`4. Garmin Does Not Address the Pending Final Decision in the First
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`IPR .................................................................................................................. 6
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`5. Conclusion. ................................................................................................ 7
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`Pursuant to 37 C.F.R. § 42.107(a) Cuozzo Speed Technologies LLC
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`(“Patent Owner”) submits the following preliminary response to Garmin’s
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`petition.
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`1.
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`Introduction.
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`This is the second inter partes review (“IPR”) filed by Garmin for
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`U.S. Patent 6,778,074 (“‘074 Patent”). The first IPR filed by Garmin
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`(IPR2012-00001) is currently pending a final decision by the Patent Trial
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`and Appeal Board (“PTAB”). There are several reasons this second IPR
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`should be rejected:
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`First, this second IPR is entirely duplicative of Garmin’s first IPR. In
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`the first IPR, Garmin alleged that all claims ‘074 Patent (claims 1-20) are
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`invalid based on the references Evans, Nagoshi, Tegethoff, Vaughn, Wendt
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`and others.1 The PTAB rejected all grounds of unpatentability alleged by
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`Garmin except those with regard to claims 10, 14 and 17. In the second IPR,
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`Garmin cites to the same exact references and combinations it cited in the
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`first IPR along with one additional reference, Hauler, which is not prior art
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`1 The Nagoshi and Vaughn references were cited by Garmin in response to
`Patent Owner’s motion to amend.
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`1
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`and nevertheless is entirely duplicative of references at issue in the first
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`IPR.2
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`Second, Garmin, as it did in the first IPR, fails to state its proposed
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`construction for any claim terms of the ‘074 Patent. Instead, Garmin
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`proposes multiple claim constructions for a single claim term (“integrally
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`attached”) and instructs the PTAB undergo an overly burdensome
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`assessment of the patentability of the claims under a multitude of
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`permutations of claim constructions and references.
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`Finally, a favorable decision for Patent Owner in the first IPR would
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`estop Garmin’s second IPR. 37 CFR 42.73(d). The first IPR is pending a
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`final decision which could encompass issues related to claim construction,
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`conception and reduction to practice, and patentability. Should the PTAB
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`rule in the first IPR that the claims at issue are patentable, Garmin will be
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`estopped from challenging the claims of the ‘074 Patent.
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`Clearly, Garmin’s redundant, “see-what-sticks” approach is an
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`attempt to undermine and take advantage of the time-limited, resource-
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`2 Garmin also identifies a Brandt reference on p. 4 of its second IPR, but
`the PTAB should not consider the Brandt reference.
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`never cites the Brandt reference in the Proposed Statutory Rejections. Thus,
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`2
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`intensive IPR process and, therefore, the PTAB should reject Garmin’s
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`second IPR petition.
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`2.
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`Garmin’s Second IPR is Entirely Duplicative of Its First IPR
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`Garmin does not provide a single reason why this second IPR is not
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`duplicative of the first IPR or why the PTAB and the parties should waste
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`their respective time and resources addressing the same references and claim
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`construction issues in a second IPR.
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`In the first IPR, Garmin alleged that all of claims 1-20 in the ‘074
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`Patent were unpatentable based on 35 U.S.C. §§ 102 and/or 103 in view of
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`several references. The PTAB rejected all of Garmin’s allegations, except
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`those for original claims 10, 14, and 17 in view of the references Aumayer,
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`Evans, Tegethoff, Wendt and others. After institution of trial on claims 10,
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`14 and 17, Patent Owner filed a motion to amend proposing new claims 21-
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`23, in response to which Garmin alleged that Patent Owner’s proposed new
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`claims are unpatentable based on the references Nagoshi and Vaughn (a
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`reference cited during prosecution of the ‘074 Patent). Thus, the references
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`Aumayer, Evans, Tegethoff, Wendt, Nagoshi and Vaughn are all at issue in
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`the first IPR and have been considered by the PTAB.
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`In the second IPR, Garmin again alleges that all of claims 1-20 of the
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`‘074 Patent are unpatentable over the same exact references at issue in the
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`3
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`first IPR, except that Garmin has replaced the Aumayer reference with the
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`newly-cited Hauler reference. The Hauler reference is not, as alleged by
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`Garmin, prior art under 35 USC § 102(e), and the Hauler reference is
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`entirely duplicative of the references (such as Aumayer) at issue in the first
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`IPR.
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`
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`With respect to Garmin’s allegation that Hauler is prior art under 35
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`USC §102(e), Hauler is an International Application (“IA”) filed on October
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`10, 2000. Under 35 USC § 102(e), an International Application that was
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`filed before November 29, 2000 does not have a 102(e) date. See MPEP 706
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`(“Publications of international applications filed before November 29, 2000
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`(which would include WIPO publications and U.S. publications of the
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`national stage (35 U.S.C. 371)) do not have a 35 U.S.C. 102(e) date at all.”).
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`Thus, the PTAB should reject all grounds of unpatentability alleged by
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`Garmin based on Hauler, which is not prior art under 35 USC § 102(e).
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`Even if Hauler were considered, it is entirely duplicative of Aumayer
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`(a reference at issue in the first IPR). Hauler discusses a speed indicator that
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`is set based on a “permissible maximum speed,” which is no different from
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`the “maximum permitted speed” discussed in Aumayer. For example,
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`Hauler states that the “permissible maximum speed” is determined based on
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`(1) a maximum speed allowed on a particular road class, (2) camera-based
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`4
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`recognition of traffic signs, and (3) “driving and operating data of the
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`vehicle” such as “oil pressure, coolant temperature, state of a trailer hitch
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`and/or on-position of a fog light.” Hauler, p. 5, ¶1. Similarly, Aumayer
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`states that its “maximum permitted speed” is determined based on (1) a
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`maximum speed allowed on a particular road class in a region and (2) “data
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`regarding the vehicle, such as weight, engine size or whether or not a trailer
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`is attached.” Aumayer, Id. at col. 4, ll. 56-60; Fig. 1c. Garmin fails to
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`address why Hauler was not cited in the first IPR or how Hauler is different
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`from any of the references it cited in the first IPR.
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`Accordingly, the Board should reject Garmin’s second IPR petition,
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`which presents nothing more than duplicative references and claim
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`construction issues.
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`3.
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`Garmin’s Moving Target Claim Constructions Render Its Second
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`IPR Overly Burdensome
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`
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`As it did in the first IPR, Garmin does not provide its proposed
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`construction for any claim term. Instead, Garmin takes issue with the
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`PTAB’s preliminary construction and Patent Owner’s proposed construction
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`of the claim term “integrally attached” in the first IPR. Because Garmin
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`fails to take any definitive position on claim construction, it requests that the
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`PTAB assess the patentability of several claims under multiple permutations
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`5
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`“applying the Board’s construction” and, in the alternative, “applying
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`Cuozzo’s construction.” Because of this approach, Garmin has alleged four
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`separate grounds of unpatentability for claim 1 alone, and 46 grounds
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`altogether. Garmin never explains why its allegations are not redundant or
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`how the PTAB could possibly be expected to adjudicate 46 alleged grounds
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`of unpatentability based on varying claim constructions in the limited time to
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`conduct an IPR.
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`The Board should reject Garmin’s second IPR petition, which is
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`overly burdensome and, with 46 alleged grounds of unpatentability, unlikely
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`to be completed in the required timeframe for an IPR.
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`4.
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`Garmin Does Not Address the Pending Final Decision in the First
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`IPR
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`Other than a single passing reference to the first IPR, Garmin never
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`addresses (1) how the pending final decision in the first IPR impacts a
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`potential second IPR, (2) the effects of the estoppel provision in 37 CFR
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`42.73(d) on a second IPR for the same claims, (3) whether a potential second
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`IPR should proceed if the final decision in the first IPR is appealed, or (4)
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`how a conflicting decision in a potential second IPR could impact the first
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`IPR (or vice-versa).
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`6
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`Patent Owner respectfully submits that the PTAB should reject
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`Garmin’s second IPR petition for the reasons stated above. To the extent the
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`second IPR petition is not rejected completely, Patent Owner respectfully
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`requests the PTAB stay its institution decision pending the final decision in
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`the first IPR and any subsequent decisions, including an appeal to the
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`Federal Circuit. There is no need for the PTAB or the parties to spend
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`valuable resources in parallel proceedings (e.g., appeal and a second IPR)
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`when the issues are entirely redundant (or at least inexorably intertwined).
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`5. Conclusion.
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`For at least the foregoing reasons, denial of Garmin’s second IPR
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`petition is respectfully requested.
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`No fees are required for filing this Preliminary Response; however,
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`the Commissioner is authorized to charge any additional fees that may be
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`required, or credit any overpayment, to Kasha Law LLC, Deposit Account
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`No. 50-4075.
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`Customer No. 67050
`Date: September 25, 2013
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`7
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`Respectfully submitted,
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`/John R. Kasha/
`John R. Kasha
`Reg. No. 53,100
`Attorney for the Patent Owner
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R § 1.550(f), a copy of the Patent Owner’s
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`Preliminary Response to Petition for Inter Partes Review of U.S. Patent No.
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`6,778,074 under 35 USC §§ 311-319 and 37 CFR §42.100 et seq., filed by
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`the Cuozzo Speed Technologies LLC on September 25, 2013, was duly
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`served on the Inter Partes Requester via e-mail on September 25, 2013 to
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`the following e-mail addresses
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`jcb@hoveywilliams.com (Jennifer C. Bailey, Lead Counsel)
`Jason.Mudd@EriseIP.com (Jason R. Mudd, Back-Up Counsel)
`Eric.Buresh@EriseIP.com (Eric A. Buresh)
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`and via U.S. Priority Mail upon the following counsel of record for
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`Petitioners Garmin International, Inc. et al.:
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`Jennifer C. Bailey
`HOVEY WILLIAMS LLP
`10801 Mastin Boulevard, Suite 1000
`84 Corporate Woods
`Overland Park, Kansas 66210
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`Respectfully submitted,
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`/John R. Kasha/
`Registration No. 53,100
`Attorney for Cuozzo Speed
`Technologies LLC
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`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
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`
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`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
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`Cabrach J. Connor
`Taylor Dunham, LLP
`301 Congress Ave., Suite 1050
`Austin, TX 78701
`(512) 473-2257 (tel)
`(512) 478-4409 (fax)
`Email: cconnor@taylordunham.com
`
`
`
`
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