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

Patent Trial and Appeal Board

Jan 15, 2015

13470860 (P.T.A.B. Jan. 15, 2015)

Trials@uspto.gov Paper 10
Tel: 571-272-7822 Entered: January 15, 2015

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 IPR2014-00869
Patent 8,405,726 B2
_______________

Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION
Request For Rehearing
37 C.F.R. § 42.71

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I. INTRODUCTION
TRW Automotive US LLC (“Petitioner”) timely filed a “Request for
Reconsideration” (Paper 9, “Req. Reh’g.”) requesting rehearing of our decision
(Paper 8, “Decision”) denying institution of inter partes review of claims 1, 6, 7,
9–14, 16–18, 28–30, 33, 37–42, 45–49, 52–60, and 65 of U.S. Patent No.
8,405,726 B2 (Ex. 1002, “the ’726 patent”). Petitioner asserts that we abused our
discretion (1) by making factual findings “not supported by substantial evidence,”
and (2) by making an “unreasonable judgment in weighing relevant factors.” Req.
Reh’g. 2. Petitioner argues that our Decision “relies on the erroneous factual
conclusion that the Petition did not present sufficient evidence and arguments
regarding the claimed recess.” Id. at 3. With respect to independent claims 33 and
47, Petitioner asserts that these claims would have been obvious based solely on
the Ponziana reference (Ex. 1004). Id. at 10. Petitioner argues that it was an abuse
of our discretion not to rely solely on Ponziana rather than the “three references in
the asserted ground” in the Petition. Id.
For the reasons stated below, we deny Petitioner’s request.
II. DISCUSSION
When rehearing a decision on institution, the Board reviews the decision for
an abuse of discretion. 37 C.F.R. § 42.71(c). The burdens and requirements of a
request for rehearing are stated in 37 C.F.R. § 42.71(d):
(d) Rehearing. . . . The burden of showing a decision
should be modified lies with the party challenging the
decision. The request must specifically identify all
matters the party believes the Board misapprehended or
overlooked, and the place where each matter was
previously addressed in a motion, an opposition, or a
reply.
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A. Factual Findings Regarding the Claimed Recess
1. Description of the Claimed Recess in the ’726 Patent
Petitioner asserts that the “Decision relies on the erroneous factual
conclusion that the Petition did not present sufficient evidence and arguments
regarding the claimed recess.” Pet. 3. In support of its position, Petitioner cites
page 20 of our Decision, which stated that “[t]he parties have not directed us to a
discussion in the Specification or to a particular reference numeral that identifies
this recess.” Id., citing Decision 20. Petitioner misconstrues the substance and
significance of the statement.
This statement appears in the context of our construction of the independent
claims in the ’726 patent. Decision 20. We stated that “[i]ndependent claim 1
requires the housing to have a generally wedge-shaped, tapered recess, with the
camera viewing through the windshield via the recess.” Id. We also noted that
independent claims 28 and 40 required a tapered recess, and that independent
claims 33 and 47 required a recess. The “claimed recess” at issue in our analysis,
in its most specific claimed structure, is the generally wedge-shaped, tapered
recess required in independent claim 1.
In the Request for Rehearing, Petitioner cites page 22 of the Petition for
support that Petitioner specifically identified “‘cavity 2113’ as the reference
element [] that identifies the claimed recess.” Req. Reh’g. 3–4. According to
Petitioner, this establishes that our statement that “[t]he parties have not directed us
to a discussion in the Specification or to a particular reference numeral that
identifies this recess” (Decision 20) is an “erroneous factual conclusion” justifying
rehearing. We disagree.
Petitioner is correct in that page 22 of the Petition cites to “cavity (recess)
2113” in the ’726 patent, and to column 43, lines 54–58 of the ’726 patent
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describing cavity 2113. The cited disclosure states “cavity 2113 is angled with
respect to the windshield facing side or surface 2111c of cover plate 2111b, such
that the camera is positioned generally horizontally and directed forwardly through
the windshield 2112 when accessory module housing 2111 is mounted to mounting
module 2110a.” Ex. 1002, col. 43, ll. 54–58. This cited disclosure does not state
that cavity 2113 is generally wedge-shaped or that cavity 2113 is tapered; it states
only that cavity 2113 is “angled.”
Our statement that “[t]he parties have not directed us to a discussion in the
Specification or to a particular reference numeral that identifies this recess”
(Decision 20) related to the fact that the written Specification of the ’726 patent
does not provide any description of a generally wedge-shaped or tapered cavity, or
any details of its structure and function. That statement was in the context of
construing the meaning of the claims. It accurately pointed out that the parties did
not direct us to support in the written Specification of the ’726 patent explaining or
defining this detailed claim limitation. As stated in the Petition (Pet. 7–8) and in
our Decision (Decision 20–21), the Applicant argued during prosecution of the
application that matured into the ’726 patent, that support for the claimed generally
wedge-shaped, tapered recess was found in Figures 66 through 68. Thus, our
statement was not an erroneous factual conclusion. We considered and discussed
the only evidence brought to our attention providing support for the generally
wedge-shaped, tapered recess, and that evidence is the prosecution history
statement that the referenced patent drawings provided the required support for this
claim limitation.
2. Prior Art Disclosure of the Claimed Recess
In our Decision, we also stated that “[b]ased on the ambiguous and
inconsistent identification of the references and application of the references to the
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challenged claims, it is uncertain how the challenged claims are unpatentable in
light of the references, as required by 37 C.F.R. § 42.104(b)(3), (4).” Decision 16.
Petitioner’s acknowledgment, on rehearing, that it had “inartfully phrased the
proposed combination of the two secondary references in the alternative” (Req.
Reh’g. 2) appears to recognize the correctness of our statement that the asserted
grounds are “ambiguous and inconsistent” and thus fail to meet the requirements of
37 C.F.R. §§ 42.104(b)(3), (4).
The Petition summarized the asserted grounds of unpatentability in a chart,
reproduced below.

Chart from Petition (Pet. 2) (footnote citations to prior art omitted).
Thus, based on Petitioner’s summary chart, the basis of the Petition was that
the independent claims, claims 1, 28, 33, 40, and 47, were asserted to be
unpatentable based on a combination of three references. As we pointed out in the
Decision, however, Petitioner also asserted unpatentability based on various
combinations of two of the three references. Decision 16. This led to our
comment about “the ambiguous and inconsistent identification of the references
and application of the references to the challenged claims.” Id. In its Request,
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Petitioner asserts that the Board should now consider only Ponziana (Ex. 1004) and
Kuehnle (Ex. 1006), ignoring the “redundant citation to an additional reference.”
i.e., Kakinami (Ex. 1005). Req. Reh’g. 9–10.
1

Petitioner has the burden of showing, in its Petition, a reasonable likelihood
that it would prevail. 35 U.S.C. § 314(a); see also, 37 C.F.R. § 42.104(b) (setting
forth the requirements of a petition, including specificity and identification of
support). We resolve all vagueness and ambiguity in Petitioner’s arguments
against the Petitioner. Liberty Mutual Insurance Co. v. v. Progressive Casual
Insurance Co., CBM2012-00003, Paper 9, p. 10 (PTAB Oct. 25, 2012). We
declined to speculate on the combination of references asserted by Petitioner, that
is, whether the asserted unpatentability of the independent claims is based on a
combination of three references or two references. Decision 23. We are not
persuaded that this was an abuse of our discretion. Petitioner should not expect the
Board to search the record and piece together evidence or arguments that may
support Petitioner’s position. A request for rehearing also is not an opportunity to
correct, modify, change, or refine arguments previously presented.
In our Decision we recognized Petitioner’s arguments that (1) Kakinami
illustrates in Fig. 2a a generally wedge-shaped, tapered recess defined by boot 18
and windshield 3; (2) that Figure 2 of Kuehnle also suggests a generally wedge-
shaped, tapered recess; (3) that a tapered recess is “plainly visible” in Ponziana;
and (4) that Petitioner relies on the Declaration of Homayoon Kazerooni, Ph.D. for
evidentiary support that the challenged claims are not patentable. Decision 21.
These arguments were not overlooked or misapprehended. The fact that Petitioner

1
Petitioner asserts that “the Board has found that all of the limitations of at least
claim 1 appear in Ponziana and Kuehnle alone (without regard to Kakinami).”
Req. Reh’g. 9. The Board made no such finding in denying the Petition.
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does not agree with our analysis and conclusions does not persuade us that we
abused our discretion or overlooked or misapprehended any matter.
As we stated in our Decision, Dr. Kazerooni’s Declaration is of “very
limited probative value” and is a near verbatim recitation of the information in the
Petition Decision 26, 27. We also explained that Dr. Kazerooni does not explain
which relevant teachings of Kakinami and/or Kuehnle are being combined with
Ponziana but instead states that Kakinami and Kuehnle disclose different ways of
situating a camera in a module housing in relation to a rear view mirror and it
would have been obvious “to combine Ponziana with Kakinami and Kuehnle since
each of the three references pertains directly to a forward facing camera module
located with or at a rear-view mirror mounting element.” Id. at 22.
Petitioner argues that our statement that “Kakinami appears to disclose a
housing in Figure 2a that does not include a wedge shape” is an “incorrect factual
finding” in light of paragraph 50 of Dr. Kazerooni’s Declaration. Req. Reh’g. 4–5,
citing Decision 27.
Paragraph 50 of Dr. Kazerooni’s Declaration states that Kakinami
“illustrates in Fig. 2a a boot 18 that comprises a generally wedge-shaped recess.”
Ex. 1008 ¶ 50. Dr. Kazerooni then concludes that “Kakinami thus demonstrates
that a wedge-shaped recess in a camera housing was a well-known structure at the
time of invention for positioning a camera to look forward through a windshield.”
Id. The fact that we did not agree with Dr. Kazerooni’s conclusion does not
establish that we abused our discretion, or that we misapprended or overlooked any
matter.
We are not persuaded of any abuse of discretion in or analysis or application
of Petitioner’s arguments or evidence.
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3. Claims 33 and 37
Petitioner also asserts that we abused our discretion by not instituting inter
partes review of independent claims 33 and 47. Req. Reh’g. 10.
2
Petitioner argues
that we reached an “unreasonable result” because we denied the Petition with
respect to claims 33 and 47 “based solely on the technicality that Petitioner relied
on three references in the asserted ground, when the primary reference [Ponziana]
alone would have sufficed.” Req. Reh’g 10. Petitioner thus argues that we should
have rewritten the grounds asserted against claims 33 and 47 to rely solely on
Ponziana rather than on Ponziana, Kakinami, and Kuehnle, as asserted in the
Petition. See, Pet. 2. Petitioner does not state whether we also should have
rewritten the statutory basis of the asserted ground.
Petitioner bases its argument of an abuse of our discretion in not finding that
claims 33 and 47 on Ponziana alone based on our statement that “Ponziana
discloses a mounting element, module, housing, and camera, as recited in claim 1.”
Req. Reh’g. 10, citing Decision 21. This out-of-context statement applies to claim
1, not claims 33 and 47, which differ in scope from claim 1. Petitioner also argues
that our statement that “Ponziana does not expressly describe the shape of the
recess in which the sensor sits” supports its argument. Id., citing Decision 23. We
disagree. Petitioner’s new argument, that we should have relied solely on
Ponziana, does not persuade us that we abused our discretion.
III. CONCLUSION
We denied the Petition because we declined to speculate on the ambiguous
and inconsistent identification of the references and application of the references to
the challenged claims. Decision 23. We also denied the Petition because

2
Petitioner does not seek rehearing of any of the challenged claims that depend
from independent claims 33 and 47.
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Petitioner failed to provide a persuasive rationale for why a person of ordinary skill
would have chosen certain features from the cited references, omitted other
features, and combined the selected features to yield the invention in the
challenged claims. Id. at 24. Petitioner has not persuaded us that our
determination was an abuse of our discretion, or that we misapprehended or
overlooked any matter. Accordingly, we deny the request for rehearing.
IV. ORDER
For the reasons given, it is
ORDERED that the request for rehearing is denied.

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FOR PETITIONER:

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

FOR 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