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

Patent Trial and Appeal Board

Feb 20, 2015

12132373 (P.T.A.B. Feb. 20, 2015)

Trials@uspto.gov Paper 7
571-272-7822 Date: February 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TRW AUTOMOTIVE U.S. LLC,
Petitioner,

v.

MAGNA ELECTRONICS INC.,
Patent Owner.
____________

Case IPR2014-01346
Patent 8,179,437 B2
____________

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

CALVE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. BACKGROUND
Petitioner TRW Automotive U.S. LLC (“TRW”) filed a Petition
(Paper 1, “Pet.”) seeking inter partes review of claims 1–13 of U.S. Patent
No. 8,179,437 B2 (Ex. 1002, “the ’437 patent”). Patent Owner Magna
Electronics Inc. (“Magna”) filed a Preliminary Response. Paper 6 (“Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that
follow, and based on the evidentiary record developed so far, that TRW has
not established a reasonable likelihood that it will prevail with respect to at
least one challenged claim. Accordingly, the Petition is denied under 35
U.S.C. § 314(a) for the reasons that follow.
A. Related Proceedings
The parties inform us that the ’437 patent is the subject of a co-
pending district court case titled Magna Electronics Inc. v. TRW Automotive
Holdings Corp., Case 1:13-cv-00324 (W.D. Mich.). Pet. 2–3; Paper 5, 3.
B. The ’437 Patent (Ex. 1002)
The ’437 patent discloses a vehicle accessory module 10 used in
windshield electronic modules and interior rearview mirror assemblies. Ex.
1002, 1:24–27. Module 10 mounts to mounting attachment 18, such as a
conventional mounting button, at windshield 12. Id. at 9:9–12. Mounting
button 18 is bonded or secured to interior surface 12a of windshield 12. Id.
at 9:13–14, Fig. 2. Extender 16 mounts to and extends from mounting
attachment 18. Id. at 9:10–11. Body 10a of accessory module 10 includes
structural member 26 and cover 28, which define cavity 30 in accessory
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module 10 for mounting accessories in accessory module 10. Id. at 10:48–
51. Structural member 26 includes mounting portion 34 and plate portion
32. Id. at 10:51–53. Mounting portion 34 forms opening 34a for receiving
extender 16. Id. at 10:53–55. Mounting portion 34 and extender 16 include
cooperating teeth or projections 34b that engage one another as structural
member 26 is pressed along extender 16 toward and against windshield 12 to
retain accessory module 10 tightly or snugly against interior surface 12a of
windshield 12. Id. at 10:55–67. Accessory module 10 may include sealing
or cushioning member or strip 27 to cushion and/or seal body 10 at interior
surface 12a of windshield 12, as illustrated in Figures 7 and 8, reproduced
below. Id. at 11:41–45.

Fig. 7 shows accessory module 10 being moved along extension 16.
Fig. 8 shows accessory module 10 mounted to extension and loaded against
window 12. Id. at 5:50–55.

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C. Illustrative Claim
Claim 1 is the sole independent claim. Claims 2–13 depend directly
or indirectly from claim 1. Claim 1 is reproduced below:
1. An accessory module system for a vehicle, said
accessory module system comprising:
an interior rearview mirror assembly;
an accessory module;
at least one accessory housed at least partially in said
accessory module, said at least one accessory comprising
a camera, said camera having a lens;
an attachment member adhesively attached at an interior
surface of a vehicle windshield;
said accessory module being configured to mount to said
attachment member;
said accessory module comprising a windshield facing
portion that opposes the interior surface of the vehicle
windshield when said accessory module is mounted to
said attachment member adhesively attached at the
interior surface of the vehicle windshield;
said camera being disposed in said accessory module, said
accessory module comprising structure to angle said
camera with respect to said windshield facing portion of
said accessory module, said camera having a forward
field of view through the vehicle windshield when said
accessory module is mounted to said attachment member;
wherein said lens of said camera is spaced from the interior
surface of the vehicle windshield when said accessory
module is mounted to said attachment member
adhesively attached at the interior surface of the vehicle
windshield;
wherein said camera is angled by said structure of said
accessory module and with respect to said windshield
facing portion to at least partially compensate for the
angle of the windshield itself, and wherein a principal
axis of the forward field of view of said camera is
directed generally at or below horizontal when said
accessory module is mounted to said attachment member;
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wherein said windshield facing portion of said accessory
module comprises a resilient element disposed at the
interior surface of the vehicle windshield to at least one
of cushion and seal said accessory module relative to the
interior surface of the vehicle windshield when said
accessory module is mounted to said attachment member
adhesively attached at the interior surface of the vehicle
windshield;
wherein said accessory module is detachably mounted to
said attachment member adhesively attached at the
interior surface of the vehicle windshield; and wherein
said interior rearview mirror assembly detachably mounts
to at least one (a) said accessory module, (b) a second
attachment member at the interior surface of the vehicle
windshield, and (c) a header portion of the vehicle.

D. The Prior Art
TRW relies on the following references:
Reference Patent/Printed Publication Date Exhibit
Campbell WO 99/43242 Sept. 2, 1999 1004
Rayner I-Witness Black Box Recorder,
Intelligent Transportation
Systems Program
1005
Ponziana U.S. Patent No. 6,066,933 May 23, 2000 1006
E. The Asserted Ground of Unpatentability
TRW challenges the patentability of claims 1–13 of the ’437 patent on
the following ground:
References Basis Claims Challenged
Campbell, Rayner, Ponziana § 103 1–13
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II. ANALYSIS
A. Real Parties-In-Interest
In accordance with 37 C.F.R. § 42.8(b)(1), Petitioner identified “TRW
Automotive U.S. LLC of Farmington Hills, Michigan” as the sole real party-
in-interest.” Pet. 2.
Magna asserts that because “TRW has made statements that call into
question the true identities” of the real parties-in-interest, the requirements
of 35 U.S.C. § 312(a)(2) have not been met.” Prelim. Resp. 1. Magna also
contends that TRW “muddies the issue” by identifying “TRW Automotive
Holdings Corp.” and “TRW Vehicle Safety Systems Inc.” as co-defendants
in related litigation. Id. at 4. Magna asserts that TRW Automotive Holdings
Corp. is the ultimate parent corporation of Petitioner TRW Automotive US
LLC and “undoubtedly exhibits a significant measure of control over TRW
Automotive U.S. LLC.” Id. at 4–5. According to Magna, the fact that the
Annual Report of TRW’s parent corporation discusses TRW’s financial
position and operating results “suggests a tight financial integration”
between the two companies. Id. at 5–6. Magna does not clarify, however,
whether it is arguing that TRW Automotive Holdings Corp. and TRW
Vehicle Safety Systems Inc. are real parties-in-interest, or whether it is
arguing that only TRW’s parent company, TRW Automotive Holdings
Corp., is a real party-in-interest. We address the merits of Magna’s
assertions for both companies.
A petition for inter partes review (“IPR”) may be considered only if,
inter alia, “the petition identifies all real parties in interest.” 35 U.S.C.
§ 312(a)(2). The Office Patent Trial Practice Guide provides guidance
regarding factors to consider in determining whether a party is a real party-
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in-interest. 77 Fed. Reg. 48,756, 48,759–48,760 (Aug. 14, 2012) (Trial
Practice Guide). Considerations may include whether a non-party “funds
and directs and controls” an IPR petition or proceeding. Id. at 48,760.
Additional relevant factors include: the non-party’s relationship with the
petitioner; the non-party’s relationship to the petition itself, including the
nature and/or degree of involvement in the filing; and the nature of the entity
filing the petition. Id. A party does not become a “real party-in-interest”
merely through association with another party in an unrelated endeavor. Id.
A party also is not considered a real party-in-interest in an IPR solely
because it is a co-defendant with a petitioner in a patent infringement suit or
is part of a joint defense group with a petitioner in the suit. Id.
Whether a party who is not a named participant in a given proceeding
is a “real party-in-interest” to that proceeding “is a highly fact-dependent
question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke
the term “real party in interest” to describe relationships and considerations
that justify applying conventional principles of estoppel and preclusion. Id.
A non-party’s participation with a petitioner may be overt or covert,
and the evidence may be direct or circumstantial, but the evidence as a
whole must show that the non-party possessed effective control over the
petitioner from a practical standpoint. Zoll Lifecor Corp. v. Philips Elec. N.
Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014)
(Paper 15). We look to the evidence on which Magna relies to determine the
fact dependent issue of whether TRW Automotive Holdings Corp. and TRW
Vehicle Safety Systems Inc. are real parties-in-interest in this proceeding.
Magna speculates about what the evidence “undoubtedly exhibits” or
“suggests” concerning the relationship of TRW to its parent corporation,
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TRW Automotive Holdings Corp. Prelim. Resp. 4–6. This speculation is
based on general evidence of a parent/subsidiary relationship in a required
Annual Report (Form 10-K) submitted to the U.S. Securities and Exchange
Commission (Ex. 2002). The statement in this Annual Report s that TRW
Automotive Holdings Corp. “conduct[s] substantially all of [its] operations
through subsidiaries” (Ex. 2002, 5) is not persuasive or sufficient evidence
to establish “an involved and controlling parent corporation representing the
unified interests of itself and Petitioner,” as found in Zoll. IPR2013-00609,
Paper 15, slip op. at 12.
In RPX Corp. v. Virnetx, Inc., Case IPR2014-00171, slip op. at 6–10
(PTAB June 23, 2014) (Paper 49), the Board discussed a number of factors
to determine whether the petitioner RPX was a proxy for a non-party. Those
factors include whether the petitioner is compensated by the non-party for
filing the petition; whether the petitioner was authorized, explicitly or
implicitly, by the non-party to file the petition or to represent the non-party
in the IPR; and whether the petitioner is a “nominal plaintiff” with “no
substantial interest” in the IPR challenge. Id. at 7–10. Unlike the facts in
RPX, based on the record before us, there is no persuasive evidence that
TRW is acting as a proxy for TRW Automotive Holdings Corp.
Magna has not directed us to any evidence establishing a real party-in-
interest relationship between TRW and TRW Vehicle Safety Systems Inc.,
other than TRW’s identification of TRW Vehicle Safety Systems Inc. as
“related” and a co-defendant in a pending lawsuit. In Denso Corp. v.
Beacon Navigation GmbH, Case IPR2013-00026, slip op. at 10–11 (PTAB
March 14, 2014) (Paper 34), the Board determined that the mere fact that
parties are co-defendants or concurrent defendants in litigation does not
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make them real parties-in-interest. In Denso, as here, there was no
persuasive evidence that the non-party engaged in strategic planning,
preparation, and review of the inter partes review petition. Magna’s
speculation suggesting that TRW Vehicle Safety Systems Inc. is a real party-
in-interest in this proceeding has no persuasive evidentiary support.
TRW’s identification of the two other TRW entities as “related to
Petitioner” (Pet. 3) does not contradict TRW’s identification of the sole real
party-in-interest in this proceeding. Magna’s speculation about the motives
of TRW, i.e., that TRW “appears to be attempting to evade the estoppel
effect” (Prelim. Resp. 6), also is unpersuasive.
Accordingly, based on the evidence before us, Magna fails to establish
that either TRW Automotive Holdings Corp. or TRW Vehicle Safety
Systems Inc. is a real party-in-interest in this proceeding.
B. Claim Interpretation
In an inter partes review, claims of an unexpired patent are given their
broadest reasonable construction in light of the specification of the patent in
which they appear. 37 C.F.R. § 42.100(b); see also Trial Practice Guide, 77
Fed. Reg. at 48,766. Claim terms are given their ordinary and customary
meaning as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
1. “resilient element disposed at the interior
surface of the vehicle windshield” (claim 1)
TRW does not propose a construction for this limitation, but appears
to treat this limitation as requiring that a resilient element may be on or near
the interior surface of the windshield. Pet. 24. Magna asserts that “TRW
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improperly interprets the phrase ‘at the interior surface of the vehicle
windshield’ (emphasis added) to mean on or near the interior surface of the
vehicle windshield.” Prelim. Resp. 20. Magna asserts that this limitation
should be construed in light of the ’437 patent specification to mean “that at
least one resilient element is at least partially in contact with or at least
partially engages the interior surface of the windshield.” Id. at 22.
We interpret the limitation “a resilient element disposed at the interior
surface of the vehicle windshield” to mean “a resilient element located on
and in contact with the interior surface of the vehicle windshield when the
accessory module is mounted to said attachment member.” This definition
is consistent with the’437 patent specification, which discloses accessory
module 10 with sealing or cushioning member or strip 27 around plate 32 to
cushion and/or seal body 10 of accessory module 10 at interior surface 12a
of windshield 12 when accessory module 10 is mounted to attachment 18.
Ex. 1002, 10:51–67; Fig. 8. Figure 8 illustrates resilient seal/cushion 27
contacting interior surface 12a of windshield 12 when accessory module 10
is mounted to attachment 18. Id. at 5:50–55, Fig. 8. Figure 7 shows resilient
seal/cushion not contacting interior surface 12a of windshield 12 when
accessory module 10 is not mounted to attachment 18. See id.
C. Asserted Ground of Unpatentability
1. Obviousness of Claims 1–13 Over
Campbell, Rayner, and Ponziana
a. Overview of Campbell (Ex. 1004)
Campbell discloses an optical assembly including bracket 1 and
optical device 2. Ex. 1004, 5:15–16, Fig. 2. Optical device 2 contains
optical components for an optical monitoring system such as a lane
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departure warning system. Id. at 4:29–31. Opening 35 is located on front
surface 39 of optical device 2 with lens element 45 located within or behind
opening 35 and imager 44 within optical device 2 to detect lane markers on
the roadway. Id. at 7:12–18, Fig. 5. Bracket 1 is attached to windshield 31
by adhesive 41, which creates a tight seal between windshield 31 and front
surface 14 of bracket 1. Id. at 5:18–21. Attachment of front surface 14 of
bracket 1 by glue or adhesive tape provides a seal that surrounds opening 12
of bracket 1. Id. at 6:13–15. A separate seal, such as an annular gasket, may
be used to affix bracket 1 to windshield 30. Id. at 6:15–17. Annular seal 41
on back surface 18 of bracket 1 encircles circular opening 12 to create a seal
between back surface 18 and optical device 2 and prevent fogging of lens
element 35. Id. at 6:17–21.
Optical device 2 is removably mounted to bracket 1, as shown in
Figure 6, which is reproduced below. Id. at 5:1–4, 7:22–8:4.

Figure 6 illustrates the assembly of optical assembly.
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Extension 36 inserts into opening 13 and notches 37 lock into groove
members 19 to mount optical device 2 to bracket 1. Id. at 7:22–27. When
mounted, front surface 39 of optical device 2 is seated against back surface
18 of bracket 1 and annular seal 41 on bracket 1 creates a seal around lens
element in opening 35 of optical device 2. Id. at 7:27–8:4, Figs. 2, 6.
b. Overview of Rayner (Ex. 1005)
Rayner discloses a DriveCam that mounts behind the rearview mirror
and records video, audio, and acceleration/deceleration forces of a vehicle
during operation. Ex. 1005, 5, 17. The DriveCam camera mounts to a
bracket that is affixed to the windshield with the camera lens pointed
horizontally or slightly down (< 10 degrees). Id. at 17.
c. Overview of Ponziana (Ex. 1006)
Ponziana discloses a rain sensor that mounts on a rearview mirror
mount situated at the windshield and also includes a mounting area for
mounting a mirror thereon. Ex. 1006, 1:8–14.
d. Analysis
TRW contends that claims 1–13 are unpatentable under 35 U.S.C.
§ 103(a) over Campbell, Rayner, and Ponziana. For reasons that follow,
TRW has not demonstrated a reasonable likelihood of prevailing with
respect to its challenge of any of claims 1–13.
TRW asserts that Campbell discloses all of the limitations of claim 1,
except for a detachable rearview mirror mounted to windshield 31. Pet. 27.
TRW asserts that Campbell discloses an accessory module (optical device
2), which may be a digital camera and includes lens element 45. Id. at 16–
17. TRW further asserts that Campbell discloses an attachment member
(mounting bracket 1) that is attached to windshield 31 by adhesive 41. Id. at
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17. TRW also asserts that “[o]ptical device 2 [accessory module] is shown
in the operating position as inserted in bracket 1 [attachment member]” such
that Campbell discloses “said accessory module being configured to mount
to said attachment member.” Id. TRW contends that Figure 6 of Campbell
shows optical device 2 being mounted to bracket 1. Id. at 17–18.
TRW contends that front surface 39 of optical device 2 opposes the
interior surface of windshield 31 when device 2 is mounted to bracket 1. Id.
at 18. TRW asserts that optical device 2 has structure that angles camera to
compensate for the angle of windshield 31 when optical device 2 is mounted
to bracket 1 and set a principal axis of lens element 45 generally at or below
horizontal. Id. at 18–23. TRW asserts that Campbell discloses a resilient
element (annular seal 41), which is located on back surface 18 of bracket 1,
encircles circular opening 12 of bracket 1, and creates a seal between back
surface 18 of bracket 1 and optical device 2. Id. at 23–24. TRW notes that
claim 5 of Campbell recites a sealing device “located around said opening in
the bracket for creating a seal between said lens element and said vehicle
windshield.” Id. at 24. TRW contends that these features disclose the
following limitations of claim 1:
wherein said windshield facing portion of said accessory
module comprises a resilient element disposed at the interior
surface of the vehicle windshield to at least one of cushion and
seal said accessory module relative to the interior surface of the
vehicle windshield when said accessory module is mounted to
said attachment member adhesively attached at the interior
surface of the vehicle windshield[.]

Id. at 23–24. TRW contends that Campbell discloses the accessory module
is detachably mounted to the attachment member that is adhesively attached
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at the interior surface of the vehicle windshield because optical device 2 is
removed easily from bracket 1 for repair or replacement. Id. at 24.
Magna argues that Campbell does not disclose a resilient element. In
particular, Magna argues that “the limitation ‘a resilient element disposed at
the interior surface of the vehicle windshield’ means that that resilient
element in claim 1 is in contact with the interior surface of the windshield
when the accessory module is mounted to the attachment member that is
adhesively attached at the interior surface of the vehicle windshield.”
Prelim. Resp. 29. Magna also argues that annular seal 41 on rear surface or
backside 18 of bracket 1 “does not contact or engage (and cannot contact or
engage) the interior surface of windshield 31 in any way.” Id. Thus, “the
annular seal 41 in Campbell cannot be equivalent to the resilient element
disposed at the interior surface of the windshield recited in claim 1.” Id.
Magna notes that Campbell discloses a separate seal that affixes bracket 1 to
the interior surface of windshield 31. Id. at 29–30. Magna argues that this
seal may be at the interior surface of windshield 31, as claimed, but it is not
located at optical device 2 that mounts to attachment member 1. Id. at 30.
Magna’s arguments are persuasive. TRW has not provided sufficient
evidence or argument to establish that optical device 2, which TRW equates
to the claimed accessory module (Pet. 16–24) “comprises a resilient element
disposed at the interior surface of the vehicle windshield” as recited in claim
1. TRW asserts that Campbell teaches that “an annular seal is shown located
on back surface 18 of bracket 1” and “is employed to create a seal between
back surface 18 and optical device 2.” Pet. 23–24. TRW has not explained
how this disclosure establishes that a windshield-facing portion of optical
device 2 comprises a resilient element such as inner seal 41.
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Even if annular seal 41 of bracket 1 were considered part of optical
device 2 when optical device is mounted to bracket 1 (see Ex. 1004, Fig. 2),
TRW has not established that annular seal 41 is “disposed at the interior
surface of the vehicle windshield to at last one of cushion and seal said
accessory module relative to the interior surface of the vehicle windshield
when said accessory module is mounted to said attachment member . . . .”
TRW contends that Figure 6 of Campbell “shows seal 41 disposed at (i.e.,
on or near) the interior surface of the vehicle windshield 31.” Pet. 24.
However, TRW notes Campbell’s teaching that annular seal 41 is “employed
to create a seal between back surface 18 [of bracket 1] and optical device 2.”
Id. (citing Ex. 1004, 617–20). Campbell discloses annular seal 41 as being
located on back surface 18 of bracket 1.
1
Ex. 1004, 6:17–19. Back surface
18 of bracket 1 faces away from and does not contact the interior surface of
windshield 31. Id. at Fig. 6. In view of our interpretation of the limitation
“a resilient element disposed at the interior surface of the vehicle
windshield” to mean “a resilient element located on and in contact with the
interior surface of the vehicle windshield,” TRW’s contention that annular
seal 41 meets this limitation because it is “near” the interior surface of the
vehicle windshield is not persuasive. Nor has TRW established that inner
seal 41 cushions and seals optical device 2 “relative to the interior surface of
the vehicle windshield” when optical device 2 is mounted to bracket 1.

1
Figure 3 illustrates front surface 14 of bracket 1 and annular seal 41 is
shown in dashed lines, which generally indicate hidden lines, or a feature
that is not visible. Manual of Patent Examining Procedure § 608.02 IX.
Drawing Symbols (8th ed., rev.9, Aug. 2012).
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Campbell discloses that a separate seal, such as an annular gasket,
may be used to affix front surface 14 of bracket 1 to the interior surface of
windshield 31. Id. at 6:11–16, Figs. 2, 3, 6. This seal, which is not shown in
any of Campbell’s drawings, may be “at the interior surface of the vehicle
windshield,” but it is affixed to front surface 14 of bracket 1. TRW has not
established that the asserted “accessory module” (i.e., Campbell’s optical
device 2) comprises this seal. TRW notes that this seal “may itself be means
of attaching the bracket 1 to the windshield 31 . . . between the bracket and
the windshield separate from the attachment means (1004-008 at 6:15-16)
and also on the optical device 2. (1004-008 at 6:17-19).” Pet. 24. The
portions of Campbell cited by TRW do not disclose a seal as part of optical
device 2. Campbell discloses only that an annular gasket “could also affix
the bracket to the windshield” and “annular seal 41 is located on back
surface 18 of bracket 1 . . . .” Ex. 1004, 6:17–19.
Accordingly, TRW has not demonstrated that a reasonable likelihood
exists that it would prevail in establishing the unpatentability of claim 1.
TRW’s contentions regarding claims 2–13, which depend from claim 1, do
not overcome the deficiencies discussed supra with respect to claim 1.
III. CONCLUSION
For the foregoing reasons, TRW has not demonstrated that a
reasonable likelihood exists that it would prevail in establishing the
unpatentability of any of claims 1–13 of the ’437 patent.
IV. ORDER
Accordingly, for the reasons given, it is
ORDERED that the Petition is denied, and no trial is instituted.
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For PETITIONER:

A. Justin Poplin
Josh C. Snider
Timothy Sendek
Allan Sternstein
LATHROP & GAGE, LLP
JPoplin@LathropGage.com
JSnider@LathropGage.com
tsendek@lathropgage.com
asternstein@lathropgage.com

For PATENT OWNER:

Timothy Flory
Terence Linn
Gardner, Linn, Burkhart & Flory, LLP
Flory@glbf.com
linn@glbf.com

David Cornwell
Richard Coller
Sterne, Kessler, Goldstein & Fox PLLC
davidc-PTAB@skgf.com
rcoller-PTAB@skgf.com