TRW Automotive US LLCv.Magna Electronics Inc.

Patent Trial and Appeal Board

Jun 25, 2015

09441341 (P.T.A.B. Jun. 25, 2015)

Trials@uspto.gov Paper 39
571-272-7822 Entered: June 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TRW AUTOMOTIVE US LLC,
Petitioner,

v.

MAGNA ELECTRONICS INCORPORATED,
Patent Owner.
____________

Case IPR2014-00261
Patent 7,339,149 B1
____________

Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
IPR2014-00261
Patent 7,339,149 B1

2
I. INTRODUCTION
A. Background
Petitioner, TRW Automotive US LLC, filed a corrected Petition
(Paper 17, “Pet.”)
1
to institute an inter partes review of claims 1–5, 7, 8, 13,
and 41 of U.S. Patent No. 7,339,149 B1 (Ex. 1002, “the ’149 patent”)
pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Magna Electronics Inc.,
subsequently filed a Preliminary Response (Paper 7, “Prelim. Resp.”). On
June 26, 2014, we instituted an inter partes review of claims 1–5, 7, 8, and
13 on three grounds of unpatentability (Paper 19, “Dec. on Inst.”).
After institution, Patent Owner filed a Patent Owner Response (Paper
25, “PO Resp.”), and Petitioner filed a Reply (Paper 29, “Reply”).
An oral hearing was held on February 18, 2015. A transcript of the
hearing is included in the record. Paper 38 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1–5, 7, 8, and 13 of the ’149
patent are unpatentable.
B. The ’149 Patent
The ’149 patent, titled “Vehicle Headlight Control Using Imaging
Sensor,” issued on March 4, 2008. The ’149 patent describes a system for
“controlling [a] vehicle’s headlamps in response to sensing the headlights of
oncoming vehicles and taillights of leading vehicles.” Ex. 1002, 1:33–35.

1
Paper 17 is a corrected Petition for inter partes review filed May 9, 2014.
The original Petition for inter partes review (Paper 1) was accorded a filing
date of December 17, 2013. See Papers 3, 16.
IPR2014-00261
Patent 7,339,149 B1

3
According to the ’149 patent, prior attempts at automatic vehicle headlight
controls included a single light sensor, wherein the headlights were dimmed
in response to sensed light exceeding a threshold. Id. at 1:50–53. The ’149
patent states that such systems are ineffective at detecting oncoming
headlights at a distance and detecting taillights of leading vehicles. Id. at
1:54–62.
The ’149 patent describes vehicle headlight dimming control 12
comprising imaging sensor module 14, imaging control circuit or digital
signal processor 13, and vehicle lighting control logic module 16. Id. at
3:54–58; Fig. 2. Imaging sensor module 14 includes optical device 36, light
sensing array 38, and spectral separation device 40 disposed between optical
device 36 and light sensing array 38. Id. at 4:32–37; Fig. 2. Imaging sensor
module 14 may be mounted to, or near, the vehicle’s windshield via bracket
34. Id. at 4:13–15; Fig. 2. This positioning provides an interior location that
substantially eliminates environmental dirt and moisture problems and
provides a relatively clear view forward of the vehicle. Id. at 4:16–20.
Light sensing array 38 includes a plurality of photosensor elements 42
arranged in a matrix. Id. at 4:43–45, Fig. 4. Digital signal processor 13,
which receives output 56 from light sensing array 38, includes taillight
detection circuit 76 and headlight detection circuit 78. Id. at 4:64–5:1, Fig.
3. Taillight detection circuit 76 detects red light sources above a particular
threshold, and headlight detection circuit 78 detects white light sources
above a particular threshold. Id. at 5:12–30. Thus, “the control identifies
light sources that are either oncoming headlights or leading taillights by
identifying such light sources according to their spectral makeup.” Id. at
2:50–52.
IPR2014-00261
Patent 7,339,149 B1

4
Vehicle lighting control logic module 16 receives input 20 from
digital signal processor 13. Id. at 4:6–7, Fig. 2. Vehicle lighting control
logic module 16 responds to the input by switching headlights 18 to an
appropriate mode. Id. at 5:57–59. For instance, the headlights might be
switched from high-beam mode to low-beam mode in response to detecting
oncoming headlights. Id. at 7:47–50.
C. Illustrative Claims
Of the challenged claims in the ’149 patent, claims 1 and 7 are
independent. Claims 2–5, 8, and 13 depend, directly or indirectly, from
claim 1, which is reproduced below:
1. A control system for automatically controlling the
state of the headlamps of a controlled vehicle, said control system
comprising:
an optical system for imaging external sources of light
within a predetermined field of view; and
an imaging processing system for processing images from
said optical system and providing a control signal for controlling
the state of the headlamps as a function of the output of pixels
imaging the same spectral band of light.
Ex. 1002, 12:49–58.
Claim 7 recites:
7. A control system for automatically controlling the
state of the headlamps of a controlled vehicle, said control system
comprising:
an optical system for imaging external sources of light
within a predetermined field of view, said optical system
including an image array sensor containing a plurality of pixels;
and
an imaging processing system for processing images from
said optical system and providing a control signal for controlling
the state of the headlamps as a function of the output of pixels
IPR2014-00261
Patent 7,339,149 B1

5
imaging the same spectral band of light, wherein said optical
system is further configured to spatially segregate light sources
having different spectral compositions on said pixel image array
sensor.
Ex. 1002, 13:7–20.
D. Prior Art
The pending grounds of unpatentability in this inter partes review are
based on the following prior art:
1. Japanese Kokai Application No. S62-131837, published
June 15, 1987 (“Yanagawa”) (Ex. 1005)
2
;
2. U.S. Patent No. 4,521,804, issued June 4, 1985
(“Bendell”) (Ex. 1006);
3. Oliver Vellacott, CMOS in camera, IEE Review, 111–
114 (May 1994) (“Vellacott”) (Ex. 1007);
4. U.S. Patent No. 4,758,883, issued July 19, 1988
(“Kawahara”) (Ex. 1008); and
5. U.S. Patent No. 5,075,768, issued December 24, 1991
(“Wirtz”) (Ex. 1009).
E. Pending Grounds of Unpatentability
We instituted the instant inter partes review on the following grounds
of unpatentability:

2
Petitioner’s Exhibit 1005 contains both the Japanese patent document and an
English translation of the document; Petitioner provided an affidavit attesting
to the accuracy of the translation. See Ex. 1005; 37 C.F.R. § 42.63(b). Our
references to Yanagawa in this decision refer to the English translation.
IPR2014-00261
Patent 7,339,149 B1

6
References Basis Claim(s) Challenged
Yanagawa and Bendell § 103 1–4, 7, and 8
Yanagawa, Bendell, and
Vellacott
§ 103 5
Yanagawa, Bendell, and
Wirtz
§ 103 13
Dec. on Inst. 28–29.
II. ANALYSIS
A. Claim Construction
Petitioner contends, and Patent Owner does not dispute, that the ’149
patent has expired. Pet. 1. The Board’s interpretation of the claims of an
expired patent is similar to that of a district court’s review. See In re
Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). We are guided, therefore,
by the principle that the words of a claim “are generally given their ordinary
and customary meaning” as understood by a person of ordinary skill in the
art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d
1303, 1312-13 (Fed. Cir. 2005) (en banc). “In determining the meaning of
the disputed claim limitation, we look principally to the intrinsic evidence of
record, examining the claim language itself, the written description, and the
prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17).
The Office interprets limitations arising under 35 U.S.C. § 112, sixth
paragraph, in light of the corresponding structure, material, or acts described
in the specification. In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir.
1994) (“[P]aragraph six applies regardless of the context in which the
interpretation of means-plus-function language arises, i.e., whether as part of
IPR2014-00261
Patent 7,339,149 B1

7
a patentability determination in the PTO or as part of a validity or
infringement determination in a court.”). The sixth paragraph of § 112 states
that a claim limitation expressed in means-plus-function language “shall be
construed to cover the corresponding structure . . . described in the
specification and equivalents thereof.”
3

1. “configured to spatially segregate light sources having different
spectral compositions on said pixel image array sensor” (Claim 7)
In the Decision on Institution, we construed the phrase “configured to
spatially segregate light sources having different spectral compositions on
said pixel image array sensor” to mean that the claimed optical system is
configured for distributing light across the pixel image array sensor, and that
the structure may include at least mirrors with dichroic surfaces or prisms.
Dec. on Inst. 7–8.
Patent Owner argues that the Board’s interpretation is inconsistent
with the language of both claim 7 and the Specification of the ’149 patent.
PO Resp. 6. Patent Owner supports its argument with the Declaration of
Matthew A. Turk, Ph.D. (Ex. 2032).
Patent Owner argues that this phrase “should be construed to mean
that the system is configured to segregate light sources having different
spectral compositions onto a single or common image array sensor,” such
that the limitation means “different spectral compositions (i.e., the likes of
red, green, and blue light) are directed onto a single or common imaging
array sensor.” Id. at 7 (citing Ex, 2032 ¶¶ 40–42).

3
Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
125 Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112, sixth paragraph,
as 35 U.S.C. § 112(f). Because the ’149 patent has a filing date prior to
September 16, 2012, the effective date of the AIA, we refer to the pre-AIA
version of 35 U.S.C. § 112.
IPR2014-00261
Patent 7,339,149 B1

8
In support of this position, Patent Owner asserts:
The language of claim 7 is directed towards embodiments
having a filter (40a/b) for filtering light having different
spectral compositions onto a single image array sensor 38.
Claim 7 is not directed towards embodiments having a
dichroic mirror or prisms and multiple image array sensors
each imaging a respective single spectral composition of
light.
Id. at 8–9 (citing Ex. 2032 ¶ 42). Based on this assertion, Patent Owner
argues claim 7 is consistent with the portions of the Specification that
describe filter elements that direct light spectra onto a single or common
“image array sensor,” but is contrary to the portions that describe the use of
dichroic mirrors or prisms that separate and direct different spectral
compositions onto different arrays designed to detect different spectral
compositions of light. Id. at 9. According to Patent Owner, “[t]his
distinction renders the Board’s claim construction of claim 7 inconsistent
with the specification of the ’149 Patent.” Id.
Petitioner replies that Patent Owner is proposing to insert the wording
“single or common” into the claim construction where no such language is
found in claim 7. Reply 2. Petitioner also argues that our preliminary
construction is “fully consistent” with the Specification and does not
contradict the language of claim 7. Id. at 4–5.
We agree with Petitioner in part and Patent Owner in part. First,
Petitioner is correct that the claim is not limited to a single image array
sensor. Claim 7 recites “an image array sensor,” not a “single” image array
sensor. Ex. 1002, 13:12; see KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d
1351, 1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that an
indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or
IPR2014-00261
Patent 7,339,149 B1

9
more’ in open-ended claims containing the transitional phrase
‘comprising.’”). Patent Owner’s argument that claim 7 is “directed” to a
particular embodiment employing a single image array sensor is not
persuasive because it is inconsistent with the language of the claim and
essentially seeks to improperly read limitations from the Specification into
the claim. See In re Am. Academy of Sciences Tech. Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a
claim from the preferred embodiment described in the specification, even if
it is the only embodiment described, absent clear disclaimer in the
specification.”).
Second, Patent Owner is correct that light sources must be spatially
segregated onto a common pixel image array sensor. Claim 7 recites that the
optical system is “configured to spatially segregate light sources having
different spectral compositions on said pixel image array sensor” (emphasis
added). Thus, at least two light sources must be spatially segregated on the
same image array sensor.
The parties’ dispute, however, is really over the interpretation of
“image array sensor.” Patent Owner’s position appears to be that the term
excludes the use of different light sensing arrays with light segregated by
dichroic mirrors and prisms, as shown in Figure 6 of the ’149 patent. PO
Resp. 7–9. Petitioner, on the other hand, believes that an “image array
sensor” may have multiple contiguous arrays. Reply 2–5.
The term “image array sensor” appears in the claims of the ’149
patent but is not described in the Specification.
4
The ’149 patent discloses
imaging sensor module 14, which includes optical device 36, array 38 of

4
The Abstract of the ’149 patent uses the term “imaging array sensor.”
IPR2014-00261
Patent 7,339,149 B1

10
photon-accumulating light sensors (also referred to as light-sensing array
38), and spectral separation device 40 disposed between optical device 36
and array 38. Ex. 1002, 4:32–37, Fig. 2. Spectral separation device 40,
which may be a filter array, separates light from the scene forward of the
vehicle into a plurality of spectral bands. Id. at 4:34–36.
Importantly, however, claim 7 does not recite an “array”; it recites an
“image array sensor.” The Specification states that Figure 5 is a “block
diagram of an imaging sensor,” and Figure 6 is “an alternative embodiment
of an imaging sensor.” Id. at 3:35–36. The sensor depicted in Figure 5
includes a single photosensor array 38a, whereas the sensor depicted in
Figure 6 includes multiple photosensor arrays 38b. Id. at 6:1–10, 8:38–41.
In yet another embodiment, “imaging sensor module 14c includes three
light-sensing arrays (not shown) and a spectral separation device overlying
the light-sensing arrays which directs spectral bands to different arrays.” Id.
at 8:56–60. Thus, we do not see any basis in the Specification to limit the
claimed “image array sensor” to a sensor with just one array. See also Reply
3 (citing for the ordinary meaning of “sensor” a dictionary definition that
would encompass a device with multiple components, Ex. 1012 (renumbered
as Ex. 1057)).
5

Patent Owner’s arguments regarding the Specification pertain to
element 38, which Patent Owner calls “image array sensor 38.” PO Resp.
7–8. The Specification, however, never refers to element 38 as an “image
array sensor.” The Specification calls it an “array,” “light-sensing array,” or

5
Petitioner filed Exhibits 1012–14 on April 17, 2014, and then filed different
documents also numbered as Exhibits 1012–14 on December 15, 2014.
To ensure a clear record, we renumber the documents filed on December 15,
2014 as Exhibits 1057–59.
IPR2014-00261
Patent 7,339,149 B1

11
“photosensor array.” See, e.g., Ex. 1002, 4:32–48, 5:2–7, 6:1–17 (“single
photosensor array 38a”), 8:30–55 (“two or more pairs of photosensor arrays
38b”). Patent Owner’s position would require us to read out “sensor” from
the claim, when Patent Owner deliberately chose that language instead of
merely reciting an “array.”
6

Accordingly, on the full record, we maintain our construction of
“configured to spatially segregate light sources having different spectral
compositions on said pixel image array sensor” to mean that the claimed
optical system is configured for distributing light across the pixel image
array sensor, and that the structure may include at least mirrors with dichroic
surfaces or prisms. We also construe “image array sensor” to mean a device
that senses a two-dimensional image, which may comprise a single light
sensing array or multiple light sensing arrays.
2. “as a function of the output of pixels imaging the same
spectral band of light” (Claims 1 and 7)
In the Decision on Institution, we interpreted the phrase “as a function
of the output of pixels imaging the same spectral band of light” to mean “as
a function of the output of pixels imaging the same color band.” Dec. on
Inst. 8–9. The parties do not dispute this interpretation, and we see no
reason to modify this interpretation in light of the record developed at trial.

6
For example, claim 15 recites “wherein said image processing system
includes at least two photosensor arrays, and wherein said optical system
comprises at least two lenses, one of said at least two lenses being configured
to image onto one of said at least two photosensor arrays, and the other of said
at least two lenses being configured to image onto the other of said at least
two photosensor arrays.”
IPR2014-00261
Patent 7,339,149 B1

12
3. “means for filtering infrared light from said external sources
of light” (Claim 13)
In the Decision on Institution, we interpreted “means for filtering
infrared light from said external sources of light” as follows:
Function: “filtering infrared light from said external sources of light”;
Corresponding structure: an infrared filter.
Dec. on Inst. 9–10. The parties do not dispute this interpretation, and we see
no reason to modify this interpretation in light of the record developed at
trial.
B. Asserted Obviousness of Claims 1–4, 7, and 8 over Yanagawa
and Bendell
Petitioner asserts that claims 1–4, 7, and 8 are unpatentable under 35
U.S.C. § 103(a) over the combination of Yanagawa and Bendell. Pet. 11–
19, 22–28.
7,8
To support its assertions, Petitioner relies on the Declarations
of Jeffrey A. Miller, Ph.D. (Exs. 1011, 1059). Patent Owner disagrees with
Petitioner’s assertions. PO Resp. 10–24.
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the

7
We note that on pages 3–4 of the Petition, Petitioner indicates that claims 1–
4 and 8 are “anticipated” by Yanagawa in view of Bendell under 35 U.S.C.
§ 102(a) (pre-AIA). We determined that this identification is a typographical
error. Dec. on Inst. 16. Petitioner also mistakenly references 35 U.S.C.
§ 102(a) (pre-AIA) in discussing its obviousness ground on page 11 of the
Petition.
8
In the Petition, Petitioner asserted that claim 7 is unpatentable under 35
U.S.C. § 103(a) over either (1) Yanagawa and Bendell or (2) Yanagawa,
Bendell, and Kawahara. Pet. 22–28. We did not institute inter partes review
of claim 7 based on the combination of Yanagawa, Bendell, and Kawahara.
See Dec. on Inst. 24–25.
IPR2014-00261
Patent 7,339,149 B1

13
invention was made to a person having ordinary skill in the art to which the
subject matter pertains. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007). In the Petition, Petitioner proposed that a person having ordinary
skill in the art of the ’149 patent at the time of the invention would have had
at least the qualifications of, or equivalent to, either (1) a master’s degree in
electrical engineering or computer science, with course work or research in
vision systems, or (2) an undergraduate degree in electrical engineering or
computer science with at least two years of work making optical vision
systems. Pet. 13 (citing Ex. 1011 ¶ 14). Patent Owner argued that this
definition was incorrect because it failed to make any mention of expertise
in vehicle technologies. Prelim. Resp. 27. In our Decision on Institution,
we found Patent Owner’s argument unpersuasive because Patent Owner did
not explain how the allegedly incorrect definition led to an incorrect
obviousness analysis. Dec. on Inst. 17. The parties have not disputed this
definition further. Based on our review of the record developed during trial,
including the disclosure of the ’149 patent and the cited prior art, and the
testimony of the parties’ declarants, we adopt the above-mentioned
definition of a person having ordinary skill in the art for the purposes of this
Final Written Decision.
1. Overview of Yanagawa
Yanagawa discloses a “traveling vehicle recognition device capable,
for example, of automatically controlling headlight beams to high and low
beams according to the state of whether there is a vehicle ahead.” Ex. 1005,
2. The device includes color television camera 11 mounted to image the
forward direction of vehicle 12. Id. A video signal from television camera
11 is supplied to decoder 13, which separates the video signal into R (red), G
IPR2014-00261
Patent 7,339,149 B1

14
(green), and B (blue) color image signals that are supplied to image signal
processor 14. Id. Image signal processor 14 processes the color image
signals to recognize or detect the presence of taillights or headlights within
the imaged video. Id. at 2–3.
2. Overview of Bendell
Bendell discloses a television camera including four-port color-
splitting prism 22 and four solid-state imagers: blue-responsive imager 14,
red-responsive imager 16, and green-responsive imagers 18, 20. Ex. 1006,
3:23–25, 46–52, Fig. 1a. Bendell further discloses that each “solid-state
imager may be of the CCD [charge coupled device] type.” Id. at 3:53.
3. Claim 1
Petitioner contends that Yanagawa discloses all elements of the
control system of claim 1 except for the use of “pixels.” Pet. 13. In
particular, Petitioner asserts that Yanagawa’s color television camera 11
corresponds to the claimed optical system for imaging external sources of
light within a predetermined field of view. Id. at 13–14. Petitioner also
asserts that “Yanagawa describes an imaging processing system utilizing
images from ‘television camera 11’ that supplies images to ‘a decoder 13’
that ‘forms R (red), G (green) and B (blue) color image signals based on the
video signal,’” and decoder 13 “supplies the R, [G] and B color image
signals to an image signal processor 14,” wherein the R, G, and B signals
constitute separate images in the same spectral band of light. Id. at 14
(quoting Ex. 1005, 2). Petitioner further asserts that image signal processor
14 “operates on these respective images to provide a control signal for
controlling the state of the headlamps.” Id. at 14–15 (quoting Ex. 1005, 2–
3). Petitioner indicates that Yanagawa does not disclose expressly a
IPR2014-00261
Patent 7,339,149 B1

15
television camera that uses “pixels,” but asserts that Bendell discloses a
television camera having “pixels.” Id. at 15 (citing Ex. 1006, Abstract).
In view of these assertions, Petitioner contends that “the substitution of
the television camera of Bendell for the unspecified type of television camera
of Yanagawa, is an equivalent (and unpatentable) interchange of television
cameras.” Id. (referring to KSR). As a further reason for combining the
references, Petitioner submits that Bendell’s camera has “the advantages of
long life, light weight, ruggedness, signal-to-noise and low power
consumption [which] make the solid-state imager very attractive for color
camera use.” Id. at 16 (quoting Ex. 1006, 2:4–7).
Patent Owner argues that a person of ordinary skill in the art would
not have found claim 1 obvious based on the combination of Yanagawa and
Bendell. PO Resp. 10–11. More specifically, Patent Owner contends that
the proposed modification (1) would render Yanagawa’s system
unsatisfactory for its intended purpose (id. at 11–16), (2) would change
Yanagawa’s principles of operation (id. at 17–19), and (3) relies on
impermissible hindsight (id. at 19–20). Patent Owner also contends the
proposed modification would not have been obvious because Bendell
teaches away from the combination with Yanagawa. Id. at 20–21. All of
these arguments are based on Patent Owner’s assertion that Bendell’s CCD
imager has inferior resolution relative to Yanagawa’s television camera. Id.
at 13 (citing Ex. 1006, 2:2–4, Ex. 2032 ¶ 26); id. at 18 (citing Ex. 2032
¶ 32); id. at 19; id. at 20–21 (citing Ex. 2032 ¶¶ 23–26, 29). For example,
Patent Owner argues “[r]eplacing a sensor having a superior resolution (the
analog imaging sensor in Yanagawa) with a sensor having inferior resolution
would tend to render Yanagawa’s system incapable of accurately
IPR2014-00261
Patent 7,339,149 B1

16
recognizing headlights and taillights.” Id. at 13–14 (citing Ex. 2032 ¶¶ 24,
26, 29).
Petitioner asserts that Patent Owner’s argument based on the allegedly
inferior resolution of CCD imagers lacks credibility. Reply 9. For example,
Petitioner notes that Dr. Turk responded “I’m not sure what they were at that
time,” when asked what were the available resolutions for CCD imagers in
1996. Id. (citing Ex. 1058, 127:16–24). Relying on the testimony of Dr.
Miller, Petitioner argues Dr. Turk is incorrect regarding the resolution issue.
Id. (citing Ex. 1059 ¶¶ 30–38).
We are not persuaded by Patent Owner’s arguments. Patent Owner
and Dr. Turk rely on Bendell’s statement that “discrete sensing sites cause
resolution of the CCD imager to be limited by comparison with that of a
modern camera tube” as showing that Bendell’s CCD imager has inferior
resolution. PO Resp. 13 (citing Ex. 1006, 2:2–4); Ex. 2032 ¶ 23 (citing Ex.
1006, 2:2–4). This passage of Bendell, however, continues with “but the
advantages of long life, light weight, ruggedness, signal-to-noise and low
power consumption make the solid state imager very attractive for color
camera use.” Ex. 1006, 2:4–7. Thus, taken in full context, we are not
persuaded that Bendell’s description of limited resolution, with five
countervailing advantages making a CCD imager “very attractive,” would
have caused a person of ordinary skill in the art not to consider Bendell. A
given course of action often has simultaneous advantages and disadvantages,
which does not necessarily obviate a reason to combine references. See
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
2000) (“The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
IPR2014-00261
Patent 7,339,149 B1

17
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
We are not persuaded that the disadvantage of limited resolution with
solid-state imagers outweighs the advantages of long life, lighter weight, low
power consumption, etc. In addition, regarding Patent Owner’s argument
that the proposed modification would render Yanagawa’s system
unsatisfactory for its intended purpose, Petitioner asserts that this “argument
is premised upon an erroneous perspective that Yanagawa ‘must be
understood to be a non-pixelated sensor.’” Reply 6 (quoting PO Resp. 12).
According to Petitioner, Yanagawa teaches the use of a ‘television camera,’
without distinguishing between pixelated (solid state) and non-pixelated
(analog) forms of television cameras,” and Bendell, for example, expressly
contemplated solid-state television cameras as an improvement to
tube-based systems. Id. at 6–7. Petitioner also asserts that the proposed
modification does not change Yanagawa’s basic principle of operation for
similar reasons. Id. at 11–12. We find Petitioner’s assertions persuasive.
For the above reasons, we do not agree that Bendell teaches away
from the combination with Yanagawa or that the proposed modification
would render Yanagawa’s system unsatisfactory for its intended purpose,
change Yanagawa’s principles of operation, or require impermissible
hindsight.
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioner has shown, by a
preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over the combination of Yanagawa and Bendell.
IPR2014-00261
Patent 7,339,149 B1

18
4. Claims 2–4
Claim 2 depends from claim 1, and further requires that “said optical
system is configured to image light sources over a predetermined horizontal
and vertical range defining said predetermined field of view.” Ex. 1002,
12:59–62. Petitioner asserts that Yanagawa’s description of television
camera 11 being “mounted and set up in the front of a vehicle 12 as shown
in Fig. 2, for example, and . . . set so as to be able to image the forward
direction of the vehicle 12, especially a vehicle 121 traveling ahead and a
vehicle 122 traveling in the oncoming lane” inherently discloses the claimed
configuration such that claim 2 is obvious. Pet. 17 (citing Ex. 1005, 2;
Ex. 1011 ¶ 20). We are persuaded that, based on the cited disclosure in
Yanagawa, one of ordinary skill in the art would have understood television
camera 11 to image light sources over a predetermined horizontal and
vertical range defining a predetermined field of view, as shown in Figures 2,
5, and 6 of the reference, for example.
Claim 3 depends from claim 2, and further requires the optical system
be “fixed relative to said controlled vehicle.” Ex. 1002, 12:63–64.
Petitioner argues that claim 3 is obvious because Yanagawa discloses
television camera 11 may be mounted in a fixed position. Pet. 18 (citing
Ex. 1005, 5; Ex. 1011 ¶ 22). Particularly, Yanagawa discloses:
The television camera for imaging in the forward direction
may be mounted at any location from which the forward
direction can be imaged. The television camera may also
be configured such that the mounting angle of the camera
can be varied, such that, for example, the angle is
automatically controlled in response to the angle of
steering maneuvers.
IPR2014-00261
Patent 7,339,149 B1

19
Ex. 1005, 5 (emphasis added). We agree with Petitioner that, because the
second sentence of this passage describes a variable camera mounting as an
alternative to the mounting discussed in the first sentence, the first sentence
suggests a fixed camera mounting.
Claim 4 depends from claim 2, and further requires that the optical
system include “an image array sensor containing a plurality of pixels.”
Ex. 1002, 12:65–67. Petitioner argues that claim 4 is obvious because
“Bendell describes the camera thereof where a ‘first imager coupled to the
optical system responds to a first color and includes an array of light-sensing
pixels.’” Pet. 18 (citing Ex. 1006, 3:8–10; Ex. 1011 ¶ 24). We find
Petitioner’s argument persuasive.
Patent Owner does not present separate arguments against the
unpatentability of claims 2–4, instead relying on these claims’ dependence
from claim 1 as the basis for their patentability. PO Resp. 21.
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioner has shown, by a
preponderance of the evidence, that claims 2–4 are unpatentable under
35 U.S.C. § 103(a) as obvious over the combination of Yanagawa and
Bendell.
5. Claim 7
Petitioner relies on substantially the same disclosures of Yanagawa
and Bendell that it cites in arguing that independent claim 1 is unpatentable,
and likewise proposes to combine these references in the same manner
proposed in its assertions regarding the unpatentability of claim 7. Pet. 23–
26. Petitioner asserts that Bendell discloses “an image array sensor
containing a plurality of pixels.” Id. at 23–24 (citing Ex. 1006, 1:66–2:2;
IPR2014-00261
Patent 7,339,149 B1

20
Ex. 1011 ¶30). Regarding the claim 7 limitation of the optical system being
“configured to spatially segregate light sources having different spectral
compositions on said pixel image array sensor,” Petitioner contends that
Bendell discloses an optical system so configured when the claim language
is construed to include spatial segregation by use of a prism or a mirror with
dichroic surfaces. Id. at 25.
Again referring to KSR, Petitioner contends that “the substitution of the
television camera of Bendell for the unspecified type of television camera of
Yanagawa, is an equivalent (and unpatentable) interchange of television
cameras.” Id. at 24. As a further reason for combining the references,
Petitioner submits that Bendell’s camera has “the advantages of long life, light
weight, ruggedness, signal-to-noise and low power consumption [which]
make the solid-state imager very attractive for color camera use.” Id. at 16
(quoting Ex. 1006, 2:4–7).
Patent Owner makes two arguments with respect to claim 7. First,
Patent Owner contends that its argument that a person of ordinary skill in the
art would not have found the combination of Yanagawa and Bendell
obvious, discussed above in connection with claim 1, also applies to claim 7.
PO Resp. 10–21. We do not find this argument persuasive for the reasons
discussed with respect to claim 1. See supra Section II.B.3.
Second, Patent Owner argues that Petitioner’s reliance on Bendell as
disclosing an optical system “configured to spatially segregate light sources
having different spectral compositions on said pixel image array sensor” is
wrong because “Bendell does not meet the proper construction of claim 7,”
as proposed by Patent Owner. PO Resp. 22. According to Patent Owner,
Bendell discloses at least three separate imagers (blue-responsive imager 14,
IPR2014-00261
Patent 7,339,149 B1

21
red-responsive imager 16, and green-responsive imagers 18 and 20), and as
such, does not teach or suggest a single image array sensor. Id. at 22–23.
Petitioner argues in reply that “Bendell teaches the use of a single
array formed of multiple imagers.” Reply 13. More specifically, Petitioner
argues that “the cooperative arrangement of [Bendell’s] imagers 14, 16, 18,
20 constitutes an imaging array sensor as claimed.” Id. at 3.
Although we do not agree with Patent Owner’s contention that the
disputed phrase should be limited to a single image array sensor (see supra
Section II.A.1), our construction calls for the optical system to be
“configured for distributing light across the pixel image array sensor”
(emphasis added), which means light is distributed over one image array
sensor. Accordingly, the essential dispute between the parties is whether
Bendell’s imagers 14, 16, 18, 20 can be considered to constitute an “image
array sensor.”
Applying our construction of “image array sensor” as a device that
senses a two-dimensional image, which may comprise a single light sensing
array or multiple light sensing arrays (see supra Section II.A.1), we
determine that imagers 14, 16, 18, 20 form such a device and, thus,
constitute an image array sensor. See Tr. 28:19–29:7 (Patent Owner
acknowledging that “Bendell is configured to spatially segregate light
sources having different spectral compositions,” just onto multiple light-
sensing arrays). Although imagers 14, 16, 18, 20 are separate elements,
there is no requirement that a group of light-sensing arrays be disposed in a
common housing or on a single substrate, or otherwise be physically
connected, to comprise collectively a “sensor.” Furthermore, imagers 14,
16, 18, 20 operate in a cooperative manner in the sense that their respective
IPR2014-00261
Patent 7,339,149 B1

22
signals are processed to form a composite signal. Ex. 1006, 4:30–34. In
other words, none of the imagers operate independently to produce an
image. For these reasons, Patent Owner’s second argument is unpersuasive.
Accordingly, we determine that Petitioner has shown, by a
preponderance of the evidence, that claim 7 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over the combination of Yanagawa and Bendell.
6. Claim 8
Claim 8 depends from claim 1, and further recites that “said image
processing system processes images on a frame by frame basis and examines
various frames in order to detect the motion of various light sources relative
to said controlled vehicle.” Ex. 1002, 13:21–25. Petitioner argues that
Yanagawa discloses processing images in successive frames to detect
motion because image signal processor 14 calculates the distance between
vehicles based on image data stored every 0.05 second. Pet. 19 (citing
Ex. 1005, 4; Ex. 1011 ¶ 26).
We find this argument persuasive. Yanagawa discloses periodically
capturing image data, such as every 0.05 seconds, to calculate the distance
between vehicles and relative traveling speeds. Ex. 1005, 4. Figures 5(A)
and 5(B) of Yanagawa depict two images, or frames, of the same pair of
taillights 52, 53, where the image of Figure 5(B) occurs 0.05 seconds after
the image of Figure 5(A) and shows the apparent change in the distance
between taillights 52, 53 resulting from the relative movement of the
vehicles. Id.
Patent Owner does not present separate arguments against the
unpatentability of claim 8, instead relying on its dependence from claim 1 as
the basis for patentability. PO Resp. 21.
IPR2014-00261
Patent 7,339,149 B1

23
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioner has shown, by a
preponderance of the evidence, that claim 8 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over the combination of Yanagawa and Bendell.
C. Asserted Obviousness of Claim 5 over Yanagawa, Bendell, and
Vellacott
Claim 5, which depends from claim 4, recites that the pixel image
array sensor is a CMOS (complementary metal oxide semiconductor) active
pixel image array sensor. Ex. 1002, 13:1–3. Petitioner asserts that Vellacott
teaches this limitation of claim 5, arguing that Vellacott “shows the
advantages of substituting CMOS sensors in place of CCD sensors” because
of lower power consumption by CMOS sensors.
9
Pet. 20–21 (citing Ex.
1007, 2). Petitioner concludes that “[a] person of ordinary skill in the art
would substitute the CMOS sensor of Vellacott in place of the CCD of
Bendell, doing so to save power consumption.” Id. at 21.
Relying on Dr. Turk’s testimony, Patent Owner argues that
Vellacott’s CMOS sensor uses a “rolling shutter” process in which “objects
in the image will be distorted if there is relative movement between the
CMOS sensor and the object.” PO Resp. 26 (citing Ex. 2032 ¶ 36). Patent
Owner further argues that because Yanagawa’s algorithms cannot account
for such distortion, one of ordinary skill in the art “would not have
substituted Vellacott’s CMOS sensor with Bendell’s CCD image sensor, in
combination with Yanagawa’s system, due to technical difficulties posed by
image distortion arising from the relative movement between a vehicle’s

9
We note that Bendell discloses that MOS (metal oxide semiconductor) and
CCD imagers were commonly used solid-state image arrays. Ex. 1006, 1:63–
66.
IPR2014-00261
Patent 7,339,149 B1

24
image sensor and another vehicle’s headlights.” Id. (citing Ex. 2032 ¶¶ 36–
39).
We do not find this argument persuasive. Dr. Turk’s statement that
the “algorithms in Yanagawa would not be able to account for distortion
created by the use of a CMOS image sensor” (Ex. 2032 ¶ 36) is not
supported by any objective evidence or analysis. Rather, Dr. Turk merely
labels Yanagawa’s algorithms “hopelessly naïve.” Id. Furthermore,
Vellacott describes using the CMOS sensor in an automotive application to
automatically reduce headlamp glare from behind by recognizing the
presence of headlamps in the field of view and accordingly dimming rear
view and side mirrors. Ex. 1007, 4. This disclosure demonstrates that
accounting for distortion resulting from relative movement between the
CMOS sensor and the object was within the level of ordinary skill in the art
at the time of the invention.
Patent Owner also argues that Yanagawa’s algorithms would have to
be redesigned to accurately detect and locate headlights and taillights with a
CMOS sensor, and such a redesign “would result in a substantial change to
the principle operation of the Yanagawa system.” PO Resp. 27 (citing Ex.
2032 ¶¶ 32, 37). Patent Owner does not explain precisely what principle of
operation allegedly would be changed, but does state that changing
Yanagawa’s algorithms “would directly affect the principle of Yanagawa’s
system” because the “algorithms in Yanagawa are a core aspect of
Yanagawa’s system that ultimately dictate whether or not the state of the
headlights is adjusted.” Id. at 17–18 (citing Ex. 1005, 3–4; Ex. 2032 ¶ 32).
Patent Owner’s argument is overly narrow because it suggests any
change to Yanagawa’s algorithms would change the principle of operation.
IPR2014-00261
Patent 7,339,149 B1

25
Instead, the system resulting from the proposed modifications to Yanagawa
would operate on the same principle in that it would use an image sensor to
image the field of view, process the image signals to detect the presence of
headlights or taillights, and control the vehicle’s headlamps in response to
such detection, with the only difference being the type of imager used. See
In re Magna Elecs., Inc., 2015 WL 2110525 at *4 (holding that replacement
of CCD camera with CMOS camera in a similar context was “nothing more
‘than the predictable use of prior art elements’”). Thus, we disagree that any
redesign of Yanagawa’s algorithms required for the proposed modification
would change Yanagawa’s principle of operation.
Finally, Patent Owner argues that the proposed modification would
render Yanagawa inoperable for its intended purpose because of “the
inability of Yanagawa’s algorithms to account for the rolling shutter of
Vellacott’s CMOS sensor.” Id. at 27 (citing Ex. 2032 ¶ 38). This argument
is not persuasive. Dr. Turk testifies that “substituting Vellacott’s CMOS
image sensor into Yanagawa’s system would tend to render Yanagawa’s
system essentially incapable of accurately detecting and locating headlights
and taillights.” Ex. 2032 ¶ 38 (emphases added). This qualified statement,
which is not supported by objective evidence or analysis, is insufficient to
establish that the proposed modification would render Yanagawa inoperable.
Moreover, as noted above, Vellacott discloses using CMOS sensors to
recognize headlights in a field of view in automotive control systems,
showing that algorithms for processing the resulting signals were within the
level of ordinary skill in the art at the time of the invention. Ex. 1007, 4.
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioner has shown, by a
IPR2014-00261
Patent 7,339,149 B1

26
preponderance of the evidence, that claim 5 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over the combination of Yanagawa, Bendell, and
Vellacott.
D. Asserted Obviousness of Claim 13 over Yanagawa, Bendell,
and Wirtz
Claim 13, which depends from claim 1, further recites that the optical
system includes “means for filtering infrared light from said external sources
of light.” Ex. 1002, 13:39–41. Petitioner asserts that Wirtz teaches this
limitation of claim 13 based on its disclosure of “the desirability of using an
infrared filter, such that the ‘infrared filter may also be provided to reduce
undesired response of the CCD detector in the infrared region of the
spectrum.’” Pet. 29–30 (quoting Ex. 1009, 2:66–3:2). Petitioner concludes
that “[a] person of ordinary skill in the art would use the infrared filter of
Wirtz in the device of Bendell, in order to reduce undesired response of the
CCD detector in the infrared band.” Id. at 30.
Patent Owner argues that Wirtz discloses use of an infrared filter with
a linear detector scanner “to reduce undesired response of the linear detector
due to the fluorescent lights and mirrors of the scanner,” and there “is no
disclosure in Bendell or Wirtz to use such a filter to filter infrared light from
external sources of light within a predetermined field of view.” PO Resp.
28. Petitioner argues that Patent Owner “presents the reference too
narrowly,” and the “features of the CCD detector response drive use of
Wirtz’s infrared filter, not the nature of [the] infrared light source.” Reply
15.
We agree with Petitioner. Wirtz discloses a scanner in which table 10
supports workpiece 12 under fluorescent lights 16 and mirror 18. Ex. 1009,
2:51–53, Figs. 2, 3. Light reflected from workpiece 12 is focused onto linear
IPR2014-00261
Patent 7,339,149 B1

27
detector 20, which may be a CCD. Id. at 2:54–59. Wirtz also discloses
providing an infrared filter “to reduce undesired response of the CCD
detector in the infrared region of the spectrum.” Id. at 2:67–3:2. Although
fluorescent lights 16 likely are the primary source of infrared radiation,
Wirtz does not exclude the possibility that the infrared filter would reduce
undesired response from other sources. In any event, we conclude that one
of ordinary skill in the art would have understood from Wirtz’s disclosure
that an infrared filter would reduce undesired response of a CCD detector in
the infrared region resulting from both internal and external sources.
Accordingly, a person of ordinary skill in the art would have
recognized that Wirtz’s disclosure of using an infrared filter to reduce
undesired response of a CCD detector in the infrared region would be
applicable to the CCD imager of Bendell. An obviousness analysis “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. Furthermore, “if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” Id. at 417; see also
id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioner has shown, by a
preponderance of the evidence, that claim 13 is unpatentable under 35
IPR2014-00261
Patent 7,339,149 B1

28
U.S.C. § 103(a) as obvious over the combination of Yanagawa, Bendell, and
Wirtz.

III. CONCLUSION
Petitioner has shown, by a preponderance of the evidence, that claims
1–4, 7, and 8 of the ’149 patent would have been obvious over the
combination of Yanagawa and Bendell.
Petitioner has shown, by a preponderance of the evidence, that claim 5
of the ’149 patent would have been obvious over the combination of
Yanagawa, Bendell, and Vellacott.
Petitioner has shown, by a preponderance of the evidence, that claim
13 of the ’149 patent would have been obvious over the combination of
Yanagawa, Bendell, and Wirtz.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–5, 7, 8, and 13 of the ’149 patent are
determined to be unpatentable;
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2; and
FURTHER ORDERED that the copies of Exhibits 1012–14 filed on
December 15, 2014 are renumbered as Exhibits 1057–59, respectively.
IPR2014-00261
Patent 7,339,149 B1

29

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