Article One Partners announced earlier today that two winners will share the $50,000 prize for discovering prior art in Article One’s Garmin/SP Technologies Patent Study. The Study related to a graphical interface providing a touch screen keyboard display that may not be minimized, maximized, closed or deleted. In a 2008 complaint filed in federal court in Chicago, SP Technologies, LLC (SPT) accused Garmin Limited and Garmin International, Inc. of infringing SPT’s patent. Garmin is a market leader in the portable navigation devices market. This litigation follows prior industry action from SPT involving this patent including infringement actions that have settled against Apple’s iPhone and iPod Touch (settled May, 2008) and Magellan Navigation products (settled January, 2009), in addition to ongoing cases against Samsung Group, HTC Corporation and TomTom products.
SPT is the owner of U.S. Patent No. 6,784,873. In its complaint, SPT accused Garmin of infringing the patent by the sale of Garmin’s touch screen personal navigation devices, such as the nuvi 260. Garmin’s nuvi product line is part of Garmin’s auto/mobile segment. Garmin reported in its Nov. 5, 2008 10-Q that the auto/mobile segment generated $626.506M of the Company’s $870.355M revenues (71.98%) in the third quarter of 2008 and that the “automotive/mobile segment revenue grew 27.3% from the year-ago period, on the strength of the nuvi series of personal navigation devices.”
Cheryl Milone, founder of Article One Partners, said:
We’re thrilled to announce our first winning Patent Study, and to provide the $50,000 Reward compensation to our Advisors in less than three months after the launch of the company. Our Advisors were able to uncover what we believe is critical information related to IP disputes involving brands with the global resources of Apple and Samsung. Citizen review can have a powerful impact upon both validating the strength of legitimate patents, or as in this case with SPT and Garmin, showing an invention may have existed more than one year before the date of a patent that’s being enforced in litigation impacting entire industries. This first Patent Study result shows the power of global peer review when applied to patent reform, and we’re excited to continue vetting the many hundreds of prior art submissions our Advisors have submitted in less than three months time.
RickyJames and Patented were the winners selected by Article One for their success in identifying what Article One believes to be invalidating prior art that will assist Garmin in defending itself against SPT. RickyJames was first to submit his winning prior art and so earns $35,000.00. Patented was second to submit the winning prior art, earning $15,000.00.
The determination of winners was based on Article One’s analysis (see claim chart) of the complete file historyby outside counsel, leading Article One to reach the opinion that the prior art is invalidating because it teaches what is claimed in the subject patent U.S. Patent No. 6,784,873. Article One believes that the claimed inventions would have been obvious to persons of ordinary skill in the relevant art at the time of the inventions. The first prior art reference is a 1991 international (WIPO) publication of a pending patent application assigned to MicroSlate Inc. titled Portable computer with touch screen and computer system employing same. The second is an excerpt from an out-of-print 1998 textbook on a Microsoft Windows Operating system, Windows CE.
It is important to keep in mind, however, that SPT’s patent claims are still presumed to be valid and enforceable. Only a U.S. federal district court or the U.S. Patent Office can invalidate patent claims, and if that happens it is anticipated that SPT would appeal such a decision to the United States Court of Appeals for the Federal Circuit. Nevertheless, it is Article One’s opinion based on its independent analysis of the prior art that SPT’s patent claims are anticipated and should be determined to be invalid.
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide