PTAB Denies Motion to Amend Claims in First IPR Final Written Decision

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.