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

Patent Trial and Appeal Board

Aug 28, 2014

13525763 (P.T.A.B. Aug. 28, 2014)

Trials@uspto.gov Paper 21
Tel: 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 IPR2014-00293
Patent 8,314,689 B2
____________

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

IPPOLITO, Administrative Patent Judge.

DECISION
Petitioner’s Request for Rehearing
37 C.F.R. § 42.71
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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 July 1,
2014. The Decision denied institution of inter partes review of all claims involved
in the Petition (Paper 17, “Pet.”) namely claims 1–3, 5–10, 12, 15–25, and 27–31
of U.S. Patent No. 8,314,689 B2 (“the ’689 patent”). Petitioner requests
reconsideration of the denial of institution and contends we abused our discretion
in denying institution of inter partes review of claims 1–3, 5–10, 12, 15–25, and
27–31. 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. Claims 1–3, 5–10, 12, 20–22, 24, and 28–31 – Obviousness Over Bottesch,
Yanagawa, Vellacott, and Zheng
1. Petitioner’s Arguments Regarding the Combination of
References Relied Upon for this Ground
Petitioner contends that we abused our discretion in finding that the Petition
failed to explain sufficiently the specific combination of references Petitioner relies
upon for this alleged ground of unpatentability. Req. Reh’g 3, 8.
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In the Decision, we concluded that the Petition failed to explain the exact
combination of teachings, out of the numerous possible combinations of the four
references (i.e., Bottesch, Yanagawa, Vellacott, and Zheng), that Petitioner relies
upon to render claims 1–3, 5–10, 12, 20–22, 24, and 28–31 unpatentable under this
ground. Decision 15, 22. In coming to this conclusion, we observed for claim 1
that the Petition states initially that Bottesch is the primary reference for the CMOS
photosensor array limitation recited in claim 1 (Pet. 15), but then concludes that
“Bottesch, Yanagawa, and/or Zheng, all . . . can be properly modified to utilize the
CMOS image sensor taught by Vellacott, as a known equivalent substitution for
television or CCD cameras” (id. at 28) (emphasis added). This created an
ambiguity as to which reference(s) Petitioner proposed would have been modified
by Vellacott to meet the first CMOS photosensor array limitation of claim 1.
Decision 14–15. The Petition added further ambiguity by citing multiple
references for additional photosensor array and control limitations without
explaining how one of ordinary skill in the art would have combined the alleged
disclosures to satisfy these additional limitations. See Pet. 14, 25. Thus, we were
left to speculate on the exact combination of references relied upon to teach or
suggest multiple limitations recited in the claims at issue, which we declined to do.
Decision 14–15, 21–22.
Now, Petitioner asserts that Bottesch is the primary reference and that “[f]or
the most part,” Petitioner relies on Yanagawa, Vellacott, and Zheng as secondary
references “to illustrate the general state of the art and emphasize the commonality
in the prior art of the claimed structure.” Req. Reh’g 3. First, we are not
persuaded by this argument because it was not presented in the Petition. For
example, Petitioner argues that for a “control” limitation of claim 1, “portions of
Yanagawa, Zheng, and Vellacott . . . merely emphasize the structure similarities”
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in all of the applied references. Req. Reh’g 5 (emphasis added). However, the
Petition states that “all of the applied references disclose a control having an image
processor for analyzing image data captured by a photosensor array, or a camera
utilized for a purpose identical to a vehicular photosensor array” (Pet. 25 (emphasis
added)), but does not explain that this evidence is “merely to emphasize structure
similarities.” Id. at 24–25. Similarly, we also are not persuaded by Petitioner’s
argument that Vellacott and Zheng were relied upon “merely to emphasize the
abundance of prior art which met the ‘more than’ limitation” of claim 1 because
this was not presented in the Petition. Req. Reh’g 5.
Second, we are not persuaded that Petitioner’s alleged use of secondary
references to “illustrate the general state of the art and emphasize the commonality
in the prior art” (Req. Reh’g 3) identifies sufficiently the exact combination of
references Petitioner relies upon to show obviousness. Even assuming that a
claimed structure may be commonly disclosed in Bottesch, Yanagawa, Zheng, and
Vellacott, this commonality only indicates that Petitioner could rely on one or
more of the references to teach or suggest the claimed structure. It is incumbent
upon the Petitioner to identify, in the Petition, the specific reference or
combination of references it relies upon for its challenge. Although the Petition
states that “Bottesch, alone or in combination with the other applied references . .
. renders the challenged claims obvious” (Req. Reh’g 3 (quoting Pet. 15)), the
Petition fails to indicate what specific combination of disclosures in what
references allegedly teach or suggest the challenged claims.
A petition for inter partes review must contain “[a] full statement of the
reasons for the relief requested, including a detailed explanation of the significance
of the evidence,” and must identify specifically “[h]ow the construed claim is
unpatentable,” including identification of “where each element of the claim is
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found in the prior art patents or printed publications relied upon.” 37 C.F.R.
§§ 42.22(a)(2), 42.104(b)(4), (5). Here, the Petition fails to satisfy this
requirement. Nor will we attempt to fit evidence together into a coherent
explanation that supports an argument that demonstrates a reasonable likelihood
that Petitioner would prevail. See Stampa v. Jackson, 78 USPQ2d 1567, 1571
(BPAI 2005) (“Appellant’s Brief is at best an invitation to the court to scour the
record, research any legal theory that comes to mind, and serve generally as an
advocate for appellant. We decline the invitation.” (quoting Ernst Haas Studio,
Inc. v. Palm Press, Inc., 164 F.3d 110, 111–12 (2d Cir. 1999))).
Additionally, we disagree with Petitioner’s position that our Decision
assumes Yanagawa, Vellacott, and Zheng are necessary references for claim 1.
Req. Reh’g 6. To the contrary, we declined to make such assumptions. See
Decision 14–15 (“[W]e decline to speculate as to how four references teaching
different systems could apply to . . . claim 1.”). Thus, we are not persuaded by this
argument.
2. Petitioner’s Arguments Regarding the “More Than”
Limitation
In the Decision, we further denied Petitioner’s challenge of claim 1 and
claims 2–21, which depend from claim 1, because the Petition failed to show that
the relied upon portions of Bottesch, Vellacott, and Zheng teach the following
limitation of claim 1:
said control analyzes image data captured by photosensor elements
where an object exterior of the equipped vehicle is determined to be
present more than said control analyzes image data captured by other
photosensor elements where the determined object is not present.
Ex. 1002, col. 45, ll. 57–62; Decision 18–20. We construed this limitation to
require that the control perform the recited analysis after an object exterior of the
equipped vehicle is determined to be present. Id. at 8–10.
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In the Rehearing Request, Petitioner contends Bottesch satisfies this
limitation because it illustrates monitoring segmented areas of a photocell array.
Req. Reh’g 6. Even assuming that Bottesch provides this teaching, which we
considered in the Decision, we concluded that this disclosure does not teach or
suggest a control that performs the recited analysis of claim 1 after determining the
presence of an object. Decision 19–20. Petitioner has not persuaded us otherwise.
Petitioner further argues that the Zheng passages cited in the Petition
disclose the “more than” limitation. Req. Reh’g 6–8. Specifically, the Petition
directs us to Zheng’s detection process, which “segment[s] a color image from a
forward facing vehicle CCD camera ‘into some regions,’ and then mark[s] some of
the segmented regions from the CCD camera image as ‘region[s] of interest
(ROI).’” Pet. 26 (quoting Ex. 1007-010, right col.). Now, in its Request for
Rehearing, Petitioner contends that the Petition relied on Zheng’s recognition
process, also disclosed in the right column on page 10. Req. Reh’g 7.
We are not persuaded by these arguments because Petitioner did not make
them in the Petition. Pet. 26. A rehearing request is not a supplemental petition.
“The Board may exclude or give no weight to the evidence where a party has failed
to state its relevance or to identify specific portions of the evidence that support the
challenge.” 37 C.F.R. § 42.204(b)(5). We could not have misapprehended or
overlooked an argument that was not made in the Petition. Thus, we are not
persuaded that we abused our discretion on this basis.
B. Claims 15–19, 23, 25, and 27
For grounds pertaining to claims 15–19, 23, 25, and 27, Petitioner
incorporates arguments discussed above with respect to independent claims 1 and
22. Req. Reh’g 9. Petitioner adds that the Petition clearly stated its challenges
based on Mietzler, Venturello, and/or Tadashi. Id. at 9–10. For the reasons
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discussed above for independent claims 1 and 22, we are not persuaded that we
abused our discretion in concluding that Petitioner has not shown a reasonable
likelihood that it would prevail on its challenges to claims 15–19, 23, 25, and 27.
See Decision 23–26.
C. Petitioner’s Arguments Regarding a Reason to Combine
In the Decision, we concluded that the Petition’s analysis was silent on any
reason for combining Bottesch, Yanagawa, Zheng, and/or Vellacott for the
limitations of a “control comprising an image processor, said image processor
processing image data captured by said photosensor array” and “said control
analyzes image data captured by photosensor elements where an object exterior of
the equipped vehicle is determined to be present more than said control analyzes
image data captured by other photosensor elements where the determined object is
not present,” as recited in claim 1. Decision 16–17. We did not find the Petition’s
conclusory statement of equivalent substitution persuasive. Id.
In its Request for Rehearing, Petitioner contends that we abused our
discretion because “[t]he references themselves teach to look to other vehicular
vision art for interchangeable components, including features disclosed in
Yanagawa, Zheng, and Vellacott.” Req. Reh’g 12. Petitioner asserts that
(1) Bottesch expressly states that “[a]ny other photo sensitive device may also be
used, such as CCD’s”; (2) Yanagawa describes a vehicle recognition device
capable of automatically controlling headlights, which is different from the other
applied references “only in the choice of which vehicle system to control”;
(3) Vellacott teaches its sensor/imputer provides a single integrated architecture;
and (4) Zheng teaches a forward-facing vehicular vision system using a CCD. Id.
at 11–12 (citing Pet. 17–19).
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We are not persuaded because these arguments were not presented in the
Petition for the “control” limitations. For example, we agree that Bottesch states
that any photo sensitive device, such as CCDs, may be used with its vehicle system
(Pet. 17); however, we are unpersuaded that Petitioner presented this reasoning for
the combination of Bottesch with other references as teaching the specific
“control” limitations. Pet. 24–25. As we noted, the Petition’s analysis for a
“control comprising an image processor, said image processor processing image
data captured by said photosensor array” does not include any reason for
combining the applied references in the manner asserted. Decision 16; Pet. 24–25.
Although Petitioner may have intended for us to mix and match features among
those disclosed in the references and rely on other portions of the Petition for a
reason to combine, we were unable to discern such an intent from the wording and
structure of pages 24–28 of the Petition.
Additionally, as we explained in the Decision, we were not persuaded by
Petitioner’s assertion that it would have been a predictable solution or an obvious
design choice to turn Vellacott’s camera around to perform the same as the camera
did facing rearward. Decision 17–18. Now, Petitioner contends that the Assignee
of the ’689 patent, Donnelly Corp., was a customer for the Vellacott device. Req.
Reh’g 12 n. 4. Nonetheless, we are unpersuaded that the identity of Donnelly
Corp. as a customer of Vellacott’s imputer establishes that the Vellacott imputer
would perform the same as the system disclosed in the ’689 patent or that that fact
somehow amounts to a reason why a person of ordinary skill in the art would have
modified Vellacott and combined the references in the manner asserted by
Petitioner.
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D. Petitioner’s Arguments Regarding the Declaration of Dr. Miller
Petitioner contends the Decision constitutes an abuse of discretion because it
“summarily dismisses the expert declaration of Dr. Miller.” Req. Reh’g 12.
Petitioner further asserts that the Petition need “offer nothing more” than
Dr. Miller’s suggestion that “the claimed invention is nothing more than a
combination of familiar elements doing what one in the art would expect them to
do.” Id. at 14.
We did not overlook the testimony of Dr. Miller cited by Petitioner in the
Petition. To the contrary, we considered the evidence and argument presented in
the Petition, but found that the cited portions of Dr. Miller’s declaration repeated
the same unpersuasive arguments and statements presented in the Petition.
Decision 17 n.4. Thus, Petitioner’s contention is merely a disagreement with our
decision, which is not a sufficient basis on which to request rehearing.
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