First Inter Partes Review Decision Issued by The PTAB

First Inter Partes Review Decision Issued by The PTAB

Peter-SiddowayBy Peter Siddoway –

The PTAB has issued its first Final Written Decision in an inter partes review (IPR).  On Wednesday, the Board issued its decision in Garmin v. Cuozzo (IPR2012-00001) in favor of the petitioner, cancelling all of the patent claims at issue in the trial.

The Garmin IPR was the first IPR filed and the first IPR to be instituted by the Board.  Through its entire pendency, this case has been of great interest to those of us following the new AIA post-grant procedures.  The Board’s ruling in March on the patent owner’s Motion for Additional Discovery generated a great deal of commentary (for example, from Professor Hal Wegner), and the oral hearing in the proceeding was made available to the public via conference call (audio).

This week’s decision from the Board continues to provide insights into the IPR process.  For example:

  •  The PTAB’s final decision was similar to its decision to institute the trial.  Patent challengers have enthusiastically embraced IPRs, with over 650 petitions being filed to date.  However, so far this interest has been based largely on the Board’s high rate of instituting trials; it had been an open question whether the Board would be equally pro-challenger in its final decisions.  At least in this initial ruling, the Board’s final decision was remarkably similar to its institution decision.  The Board focused on the same claim construction issue, and it construed the term at issue in exactly the same way.  In addition, the Board found the claims at issue invalid on each of the bases on which it instituted the trial.  While we shouldn’t read too much into this, it tends to justify patent challengers’ early optimism towards the IPR process.


  • Claim construction is an important issue for both parties.  The Board’s decision includes an extensive discussion of claim construction (see pp. 7-20 of the decision), and the construction of one claim limitation was critical to the Board’s final decision.  Not only did the Board’s invalidity ruling turn on claim construction, but it also denied the patent owner’s motion to amend its claims based on this construction.  It is apparent that claim construction is going to play a significant role in future IPR decisions.  Both petitioners and patent owners should address claim construction issues in their initial filings.  The petitioner should also ensure that it has proposed invalidity grounds that will read on either construction of the terms at issue.  Otherwise, the petitioner runs the risk that an adverse finding on claim construction will result in some or all of the proposed grounds for invalidity being denied, which is exactly what happened in Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041, Paper 16 (Feb. 22, 2013).


  • Obviousness arguments are important.  The two invalidity grounds that were upheld by the Board were both obviousness grounds.  One was a combination of three references, and the other was a combination of four references.  The lesson for petitioners is to include several obviousness grounds in their petitions, regardless of the perceived strengths of any asserted anticipation grounds.  And in addressing these obviousness grounds, patent owners should ensure that they are addressing the references together, and not merely attacking each reference individually.  See, e.g., In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“One cannot show non-obviousness by attacking references individually where the grounds of unpatentability are based on combinations of references.”)


  • The process was relatively quick.  Garmin filed its petition in this case on September 16, 2012, which was the first day IPRs were available.  From start to finish, the process took less than 14 months.  More importantly, the trial phase lasted only 10 months (from January 9 to November 13, 2013), which is significantly less than the statutory limit of 12 months.  This relatively quick resolution will help future parties in district court litigation as they seek to stay those civil actions in favor of co-pending IPRs.  In deciding such motions, district courts consider the potential impact of the stay on the litigation, and some judges have cited the possibility of a two-year maximum time for an IPR as a reason to deny a motion to stay (i.e., a 6-month preliminary phase, plus a 1-year trial phase, plus a statutorily-allowed 6-month extension for the PTAB to issue its final decision).  However, if the PTAB continues to issue final decisions quickly, parties seeking stays will have strong arguments in their favor.


Finally, it remains to be seen how the PTAB’s ruling will affect the related litigations filed by Cuozzo in the District of New Jersey.  The complaint in the case against Garmin asserted additional patent claims that were not made part of the IPR trial.  Thus, some patent claims have survived and Cuozzo may still press on with the litigation.  However, the court had ordered that a Markman hearing would be held only after the PTAB issued its final ruling.  It is likely that the court’s treatment of this final PTAB decision will provide further insights into both litigation and IPR strategy in the future.

Additional perspectives on this first IPR Final Written Decision can be seen in this Law360 article (subscription required), for which I was interviewed.

The IPR papers for the cases cited above are all available through the USPTO’s Patent Review Processing System (PRPS).