November 26, 2013
Authored and Edited by Abhay A. Watwe, Ph.D.; Anthony A. Hartmann
The Patent Trial and Appeal Board (“PTAB”) issued its first final written decision in an IPR proceeding, Garmin Intl., Inc. v. Cuozzo Speed Techs., LLC, IPR2012‑00001, Paper 59 at 47‑49 (Nov. 13, 2013). In its decision, the PTAB denied Cuozzo’s motion to amend all of the rejected claims of U.S. Patent No. 6,778,074 (“the ’074 patent”). The PTAB held that Cuozzo’s proposed amendments both enlarged the claim scope and introduced new matter contrary to 35 U.S.C. § 316(d)(3).
Cuozzo’s patent relates to a speed limit indicator with rejected claim 10 requiring a speedometer integrally attached to a colored display. Cuozzo’s motion proposed substitute claim 21, which added two limitations to claim 10: the speedometer comprises a liquid crystal display and the colored display is the liquid crystal display. While these added limitations had been recited in claims 12 and 18, the PTAB found Cuozzo failed to establish written description support under 35 U.S.C. § 112, ¶ 1 for the combination—the colored display is the liquid crystal display comprised by the speedometer.
The PTAB also found that the Cuozzo’s proposed amended claim enlarged the scope of the claims, particularly in view of the PTAB’s construction of “integrally attached.” Based on its construction, PTAB observed that it was illogical to regard an apparatus as being integrally attached to a component completely contained within itself. Yet proposed claim 21 recited expressly this scenario.
Patent owners may find the PTAB’s analysis instructive when amending claims in an IPR proceeding. In particular, patent owners need to ensure that the amended claims do not cover embodiments not already covered by the unamended claims and to carefully document written description support for the proposed claims. When making claim amendments, patent owners should consider using the phrasing used in the original specification to ensure that the specification explicitly discloses the subject matter of the amended claims.
claim construction, Garmin v. Cuozzo, motions to amend (MTA), Written description (35 USC § 112)
Copyright © 2013 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Webinar
May 9, 2024
Webinar
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
At the PTAB Blog
USPTO Releases Notice of Proposed Rule Making Codifying Several Precedential Case Factors
April 25, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.