TRW Automotive U.S. LLCv.Magna Electronics Inc.

Patent Trial and Appeal Board

Aug 28, 2014

11246593 (P.T.A.B. Aug. 28, 2014)

Trials@uspto.gov Paper No. 21
571.272.7822 Entered: August 28, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TRW AUTOMOTIVE US LLC,
Petitioner,

v.

MAGNA ELECTRONICS INC.,
Patent Owner.
____________

Case IPR2014-00259
Patent 7,344,261 B2
____________

Before JUSTIN T. ARBES, BART A. GERSTENBLITH, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION
Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

I. INTRODUCTION
TRW Automotive US LLC filed a Request for Rehearing (Paper 20,
“Req. Reh’g”) of the Decision Denying Institution (“Paper 19, Decision”),
dated June 26, 2014. The Decision denied institution of inter partes review
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of all claims challenged in the Revised Petition (Paper 17, “Pet.”), namely
claims 1–3, 9, 11, 12, 16, 20, 24, 26, and 28 of U.S. Patent No. 7,344,261 B2
(“the ’261 patent”). Decision 16. Petitioner requests reconsideration of the
denial of institution and contends we abused our discretion in denying
institution of inter parties review of claims 1–3, 9, 11, 12, 16, 20, 24, 26,
and 28. For the reasons stated below, Petitioner’s request is denied.
II. STANDARD OF REVIEW
Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
a panel will review the decision for an abuse of discretion.” An abuse of
discretion occurs when a “decision was based on an erroneous conclusion of
law or clearly erroneous factual findings, or . . . a clear error of judgment.”
PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
(Fed. Cir. 1988) (citations omitted). The request must identify, specifically,
all matters the party believes the Board misapprehended or overlooked.
37 C.F.R. § 42.71(d).
III. DISCUSSION
A. Anticipation – Bottesch
Petitioner asserts that the limitation
said control analyzing particular groupings of photosensor
elements from said portion of said photosensor array while
ignoring other particular groupings of photosensor elements
from said portion of said photosensor array so as to determine
as least one of presence, size, shape contour and motion of said
at least one item of interest exterior the vehicle
contains “almost entirely functional language for a system device claim.”
Req. Reh’g 2–3 (quoting Pet. 18). Petitioner contends that it cited a portion
of Bottesch that indicates Bottesch’s microcomputer uses data “to recognize
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the presence of an object without the need to make qualitative identification
of that object in relation to size or distance” and that this means that
“Bottesch[’s] microcomputer is fully capable of performing high level
functions, and is thus also fully capable (even if additional programming is
required) of performing the function set forth [above].” Id. at 3–4 (citing
Pet. 19 (citing Ex. 1011 ¶ 14; Ex. 1004, 7:7–10)).
In the Petition, Petitioner cited this portion of Bottesch not as teaching
that Bottesch is capable of performing the claimed function, but rather as
supporting the argument that “the limitation is . . . disclosed by Bottesch.”
See Pet. 18–19 (quoting Bottesch’s “lateral tracking capabilities” and the
disclosure regarding recognizing the presence of an object as noted above).
Petitioner, however, did not argue that these disclosures show that Bottesch
is capable of performing the “high level function” claimed. Even if this
argument in the Petition were intended to support the position that Bottesch
is capable of performing the claimed function rather than actually disclosing
the claimed function, the Petition fails to include the argument raised in the
Rehearing Request—that Bottesch’s disclosure of performing one high level
function means that its microcomputer is capable of performing another high
level function (e.g., with additional programming).
Petitioner also asserts that the Petition cited Bottesch’s Figure 20 “to
show how the claimed function is found in Bottesch.” Req. Reh’g 4. In
support of how Figure 20 should be understood in the context of Petitioner’s
argument, Petitioner quotes Bottesch, column 10, line 56 through column
11, line 6, and includes a paragraph explaining how that disclosure indicates
that Bottesch performs the claimed function. Id. at 4–5.
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In the Petition, however, Petitioner did not cite this portion of
Bottesch or include any discussion, such as that included at page 5 of the
Rehearing Request, to explain how Bottesch discloses this element of
claim 1. Accordingly, we did not overlook this argument regarding Bottesch
because the argument was not raised in the Petition.
B. Obviousness – Bottesch, Yanagawa, Vellacott, and Zheng
1. Reason to Combine Bottesch and Vellacott
Petitioner asserts that the Petition “cited portions of Vellacott that
taught, suggested, and motivated one of ordinary skill in the art to combine
Vellacott with Bottesch.” Req. Reh’g 6 (quoting Pet. 29–30 (stating that
“Vellacott thus further directs a person of ordinary skill in the art [to] replace
a CCD camera or image sensor, such as that taught by Bottesch, with its
integrated CMOS image sensor.”)). Petitioner contends that the Decision
“summarily ignores the motivation to combine discussion of Vellacott by
focusing only on its edge detection embodiment—while ignoring the fact
that the edge detection embodiment uses the same imputer as the rear view
mirror headlight detection embodiment.” Id. at 7.
The Decision focused on Vellacott’s edge detection embodiment with
respect to the “said control analyzing particular groupings of photosensor
elements . . . while ignoring other particular groupings of photosensor
elements” element of claim 1 because that was the portion of Vellacott cited
in the Petition as allegedly rendering it obvious “to develop specific
algorithms for vision systems to sample ‘a collection of pixels,’ while
ignoring other pixels, [to] determine the presence of an object or item of
interest.” Pet. 35; see also id. at 34 (citing Vellacott’s “top section”
discussing an edge detection algorithm); Decision 12–13. Thus, in
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considering Petitioner’s arguments with respect to this claim element, we
focused the Decision where Petitioner directed us to focus. Additionally, the
Petition did not tie the use of Vellacott’s CMOS image sensor and edge
detection algorithm to the use of such an algorithm in what Petitioner now
refers to in the Rehearing Request as “the rear view mirror headlight
detection embodiment.” See Req. Reh’g 7.
Further, Petitioner’s argument as to why one of ordinary skill in the
art would have been prompted to replace Bottesch’s CCD camera with the
CMOS image sensor of Vellacott, does not, in and of itself, mean that it
would have been obvious to one of ordinary skill in the art to maintain
Vellacott’s edge detection algorithm when combined with Bottesch or to
“develop specific algorithms for vision systems” (Pet. 35 (emphasis added))
as alleged in the Petition. The argument and further explanation provided in
the Rehearing Request was not in the Petition, and may not be raised for the
first time on rehearing.
Accordingly, because the Petition did not explain sufficiently how the
substitution of Vellacott’s CMOS image sensor for Bottesch’s CCD camera
allegedly would have rendered it obvious to one of ordinary skill in the art to
develop specific algorithms for vision systems, such as that recited in claim
1, we did not abuse our discretion in denying institution on the asserted
ground.
2. Reason to Combine Bottesch and Zheng
Petitioner asserts that “where Zheng discussed the same structure, and
a more sophisticated detection and recognition module, a person of ordinary
skill in the art would be motivated to combine Zheng with Bottesch.” Req.
Reh’g 8. Whether one of ordinary skill in the art would or would not have
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been motivated to combine Zheng with Bottesch based on Petitioner’s
position, Petitioner failed to raise this specific argument in the Petition. The
portion of the Petition quoted by Petitioner in the Rehearing Request
indicates what Zheng allegedly discloses, but does not link clearly Zheng’s
disclosure to a reason why one of ordinary skill in the art would have
combined the teachings of Zheng with those of Bottesch. Thus, we did not
overlook this argument regarding Zheng because this argument was not
raised in the Petition.
IV. ORDER
Accordingly, it is hereby ORDERED that Petitioner’s request for
rehearing is denied.

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PETITIONER:

Josh Snider
Timothy Sendek
A. Justin Poplin
LATHROP & GAGE LLP
patent@lathropgage.com
tsendek@lathropgage.com
jpoplin@lathropgage.com

PATENT OWNER:

Timothy A. Flory
Terence J. Linn
GARDNER, LINN, BURKHART & FLORY, LLP
Flory@glbf.com
linn@glbf.com

David K.S. Cornwell
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
Davidc-PTAB@skgf.com