`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT AND TRIAL APPEAL BOARD
`
`
`
`
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC,
`Patent Owner
`
`
`
`
`Case IPR2014-01393
`Patent 6,778,074
`
`
`
`
`
`
`
`
`
`
`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.
`
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`1. Introduction ............................................................................................. 1
`
`2. Ford’s Petition Is Entirely Duplicative Of Garmin’s Petition ........... 3
`
`3. As In The Second IPR, The Board Should Decline To Institute Inter Partes
`
`Review As To Previously-Cancelled Claims 10, 14 and 17 ....................... 4
`
`4. Institution As To Claims 7 And 8 Should Be Denied .......................... 4
`
`5. Ford’s Arguments Under §103(a) Should be Rejected ....................... 5
`
`6. Conclusion. .............................................................................................. 6
`
`
`
`
`
`Case No.: IPR2014-01393
`Patent No: 6,778,074
`
` Attorney’s Docket No.: CUO0003-IPR
` Page 1
`
`
`
`Pursuant to 37 C.F.R. § 42.107(a) Cuozzo Speed Technologies LLC (“Patent
`
`Owner”) submits the following preliminary response to Ford Motor Company’s
`
`petition.
`
`1.
`
`Introduction
`
`The Patent Trial and Appeal Board (“Board”) should exercise its discretion
`
`under 35 U.S.C. § 316(b) and deny Ford Motor Company’s (“Ford”) Petition for
`
`Inter Partes Review (“Petition”) – the third petition for inter partes review filed
`
`against U.S. Patent 6,778,074 (“‘074 Patent”) – to maintain the integrity of the
`
`patent system and prevent Patent Owner from being subject to serial, harassing and
`
`seemingly never-ending challenges to the same claims of the same patent.
`
`All of the claims of the ‘074 Patent were challenged by Garmin in IPR2012-
`
`00001 (the “First IPR”). IPR2012-00001, Paper 1. The Board denied institution as
`
`to all claims, except claims 10, 14 and 17. IPR2012-00001, Paper 15. In its final
`
`written decision, the Board cancelled claims 10, 14 and 17 and denied Patent
`
`Owner’s motion to amend the claims. IPR2012-00001, Paper 59. Patent Owner
`
`appealed the Board’s final written decision to the U.S. Court of Appeals for the
`
`Federal Circuit, which has yet to issue a decision on the appeal.
`
`
`
`Case No.: IPR2014-01393 Attorney’s Docket No.: CUO0003-IPR
`Patent No: 6,778,074 Page 2
`
`After the Board’s final written decision was issued, Garmin filed a second
`
`
`
`
`
`petition for inter partes review challenging all of the claims of the ‘074 Patent.
`
`IPR2013-00373 (the “Second IPR”), Paper 1. The Board denied institution of inter
`
`partes review as to previously-cancelled claims 10, 14 and 17 and claims 7 and 8,
`
`because Garmin had failed to meet its burden under 35 U.S.C. § 314(a). IPR2013-
`
`00373, Paper 12, p. 1. However, the Board instituted inter partes review as to all
`
`other claims (1-6, 9, 11-13, 15, 16 and 18-20). Id. After institution, the Second
`
`IPR was terminated based on settlement between Garmin and Patent Owner.
`
`Now, while the appellate decision from the First IPR is pending and almost
`
`one year after the Board instituted the Second IPR, Ford has filed for inter partes
`
`review of all claims of the ‘074 Patent.
`
`Patent Owner has not sued, or threatened to sue, Ford or any of its privies (to
`
`the best of Patent Owner’s knowledge) for infringement of any claim of the ‘074
`
`Patent. In fact, Patent Owner has never spoken to Ford about the ‘074 Patent.
`
`Thus, Ford’s challenge to the claims of the ‘074 Patent, which comes years after
`
`Garmin’s two inter partes review petitions, can only have one motive –
`
`harassment. Preventing “serial and harassing challenges” to a patent was one of
`
`the fundamental concerns of Congress when crafting the America Invents Act. See
`
`
`
`
`
`
`
`Case No.: IPR2014-01393 Attorney’s Docket No.: CUO0003-IPR
`Patent No: 6,778,074 Page 3
`
`http://www.leahy.senate.gov/imo/media/doc/PRESS-GoodForSmallBusiness-
`
`OnePager-FINAL.pdf. Accordingly, the Board should exercise its discretion under
`
`35 U.S.C. §316(b) to maintain the integrity of the patent system and deny Ford’s
`
`petition to discourage untimely, harassment-based challenges.
`
`2.
`
`
`
`Ford’s Petition Is Entirely Duplicative Of Garmin’s Petition
`
`Ford expressly states that its Petition is identical to Garmin’s petition in the
`
`Second IPR, except it has removed the Hauler reference cited by Garmin and
`
`included additional allegations of unpatentability of claim 7. IPR2014-01393,
`
`Paper 4, pp. 5-6. However, Ford does not provide any reason for why it waited
`
`nearly one year to file an admittedly duplicative petition. If Ford had any
`
`legitimate desire to challenge the claims of the ‘074 Patent, it could have joined the
`
`Second IPR. This type of laying-in-wait, serial challenge to the ‘074 Patent is the
`
`precise type of harassing conduct Congress was concerned about when
`
`constructing the new post-grant proceedings under the America Invents Act. See
`
`Matal, Joe, A Guide to the Legislative History of the America Invents Act: Part II
`
`of II, The Federal Circuit Bar Journal, Vol. 21, No. 4, p. 604 (“In addition, the
`
`managers’ amendment added procedural limits to both proceedings in order to
`
`
`
`
`
`
`
`Case No.: IPR2014-01393 Attorney’s Docket No.: CUO0003-IPR
`Patent No: 6,778,074 Page 4
`
`address patent owners’ complaints about serial challenges to patents.”) (available
`
`at http://www.uspto.gov/aia_implementation/guide_to_aia_part_2.pdf).
`
`
`
`3.
`
`Accordingly, the Board should deny Ford’s Petition.
`
`As In The Second IPR, The Board Should Decline To Institute Inter
`
`Partes Review As To Previously-Cancelled Claims 10, 14 and 17
`
`
`
`The Board should refuse Ford’s wasteful request to institute inter partes
`
`review as to previously-cancelled claims 10, 14 and 17. Although the Board’s
`
`final written decision canceling these claims is currently on appeal, instituting
`
`review of these claims based on prior art that has previously been considered
`
`would be an utter waste of both the Board’s and Patent Owner’s resources. This
`
`request for yet another review of canceled claims can only be based on Ford’s
`
`desire to harass Patent Owner.
`
`4.
`
`
`
`Institution As To Claims 7 And 8 Should Be Denied
`
`Institution as to claims 7 and 8 should be denied, because Ford has not
`
`overcome the reasons behind the Board’s previous refusal to institute inter partes
`
`review as to these claims.
`
`Claim 7 requires “an electrically conductive wire having opposing ends with
`
`
`
`
`
`one end connected to said display controller; and a speed limit locating device
`
`
`
`
`
`
`
`Case No.: IPR2014-01393 Attorney’s Docket No.: CUO0003-IPR
`Patent No: 6,778,074 Page 5
`
`connected to said opposing end of said wire.” The Board previously concluded
`
`that Nagoshi does not disclose this limitation. IPR2013-00373, Paper 12, p. 17.
`
`Nevertheless, Ford alleges that this limitation is rendered obvious by Nagoshi
`
`alone, but Nagoshi makes no reference whatsoever to an electrically conductive
`
`wire and Ford’s allegations of obviousness are unsupported, conclusory statements.
`
`Petition at 32. Finally, Ford’s challenge to claim 7 based on Nagoshi in view of
`
`McKenna is based on a passing reference in McKenna to certain components being
`
`“hard wired.” Petition at 33-34. However, Ford’s interpretation of McKenna is a
`
`blatant mischaracterization, and in any event, the “hard wired” components do not
`
`include a display controller. Therefore, the Petition does show a reasonable
`
`likelihood of prevailing in its challenge to claim 7 or claim 8, which depends from
`
`claim 7.
`
`5.
`
`Ford’s Arguments Under §103(a) Should be Rejected
`
`Ford’s arguments under §103(a) should be rejected because Ford has not
`
`provided a definition of a person having ordinary skill in the art. Ford haphazardly
`
`argues that various references alone or in combination would render the claims of
`
`the ‘074 Patent obvious. However, Ford has not provided any definition of a
`
`person having ordinary skill in the art, rendering all of its claims of obviousness
`
`
`
`
`
`
`
`
`
`Case No.: IPR2014-01393 Attorney’s Docket No.: CUO0003-IPR
`Patent No: 6,778,074 Page 6
`
`and all of its arguments related to the motivation to combine the various references
`
`suspect. Therefore, Ford’s arguments based on §103(a) should be rejected.
`
`6.
`
`
`
`Conclusion.
`
`For at least the foregoing reasons, denial of Ford’s IPR petition is
`
`respectfully requested. Please charge any fees due to Deposit Account 50-4075.
`
`
`
`
`
`
`
`
`Customer No. 67050
`Date: November 28, 2014
`
`
`
`
`
`Respectfully submitted,
`
`/John R. Kasha/
`John R. Kasha
`Reg. No. 53,100
`Attorney for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case No.: IPR2014-01393 Attorney’s Docket No.: CUO0003-IPR
`Patent No: 6,778,074 Page 1
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R § 1.550(f), a copy of 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., filed by
`
`the Cuozzo Speed Technologies LLC on November 28, 2014, was duly
`
`served via electronic mail upon Eric.Buresh@EriseIP.com (Eric A. Buresh)
`
`and Jason.Mudd@EriseIP.com (Jason R. Mudd), and via U.S. priority mail
`
`upon the following counsel of record for Petitioner Ford Motor Company:
`
`Eric A. Buresh
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`
`
`
`
`
`
`Respectfully submitted,
`
`/John R. Kasha/
`Registration No. 53,100
`Attorney for Patent Owner
`
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
