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

Patent Trial and Appeal Board

Feb 8, 2016

13689801 (P.T.A.B. Feb. 8, 2016)

Trials@uspto.gov Paper 9
571–272–7822 Entered: February 8, 2016
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 IPR2015-01426 (Patent 8,692,659 B2)
Case IPR2015-01427 (Patent 8,692,659 B2)
_______________

Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION1
Denying Request for Rehearing
37 C.F.R. § 42.71

1 We exercise our discretion to issue one identical decision in each case
using this caption style. Unless otherwise authorized, the parties are not
permitted to use this style. This decision cites to the record of IPR2015-
01426, unless otherwise noted.
IPR2015-01426 (Patent 8,692,659 B2)
IPR2015-01427 (Patent 8,692,659 B2)

2
I. INTRODUCTION
TRW Automotive U.S. LLC (“Petitioner”) filed a Request for
Rehearing (Paper 8, “Req. Reh’g”) of the Decision Denying Institution of
Inter Partes Review (Paper 7, “Dec.”) of claims 37, 41, 43, and 45–48 of
U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”) in IPR2015-
01426, and the Decision Denying Institution of Inter Partes Review of
claims 6–10, 12, 13, 22, and 27 of the ’659 patent in IPR2015-01427.
Because both cases relate to the ’659 patent and the Request for Rehearing
in each case presents the same issues, we issue one identical decision in each
case. In the Request for Rehearing, Petitioner argues that we
misapprehended or overlooked several matters in the Petition. For the
reasons set forth below, the Request for Rehearing is denied.
II. ANALYSIS
When considering a request for rehearing, the Board reviews its
decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party
requesting rehearing bears the burden of showing that the decision should be
modified, and “[t]he request must specifically identify all matters the party
believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
A. The ’287 Patent as Prior Art
In the Decision, we determined that Petitioner did not demonstrate a
reasonable likelihood of prevailing in showing that U.S. Patent No.
6,445,287 B1 (Ex. 1012, “the ’287 patent”) is prior art because Petitioner did
not show sufficiently that the ’287 patent lacks written description of the
challenged claims of the ’659 patent. Dec. 6–9. We explained that the ’287
patent reasonably conveys that the console supported by attachment
members in Figure 16B of the ’287 patent provides mounting surfaces for
IPR2015-01426 (Patent 8,692,659 B2)
IPR2015-01427 (Patent 8,692,659 B2)

3
vehicle accessories described in other embodiments in the ’287 patent,
including a forward facing camera. Id. Petitioner argues that we
misapprehended the disclosure of the ’287 patent. Req. Reh’g 2–11.
Specifically, Petitioner argues that the ’287 patent does not describe
sufficiently how the attachment members, such as rails, channels, or the like,
support console 8512 in Figure 16B. Id. at 3–4. According to Petitioner,
“[u]pward movement of the console 8512 at the top of this structure, as
might otherwise engage a rail or channel, would be blocked by the roof of
the car at the header H,” and “[s]liding movement at the bottom is blocked
by interference from the mirror assembly 8510.” Id. Petitioner’s argument
is not persuasive. Petitioner does not explain why upward movement of
console 8512 is required in order for the attachment members to support
console 8512. Id. Also, downward movement of console 8512 is not
blocked by interference from mirror assembly 8510. As we explained in the
Decision, the ’287 patent discloses that console 8512 includes an inverted V-
shaped or U-shaped portion that straddles mirror mounting button 8536.
Dec. 8 (citing Ex. 1012, col. 28, ll. 15–28). Thus, even assuming arguendo
that downward movement of console 8512 is required, the inverted V-
shaped or U-shaped portion of console 8512 may slide downward on each
side of mirror mounting button 8536. Ex. 1012, col. 28, ll. 15–28.
Petitioner also argues that the ’287 patent does not describe
sufficiently that the console in Figure 16B can be used to mount a forward
facing camera. Req. Reh’g 4–11. According to Petitioner, the console in
Figure 16B only can be used to mount vehicle accessories described in
previous embodiments in the ’287 patent, and the forward facing camera
only is described in a later embodiment. Req. Reh’g 4–8, 10–11.
IPR2015-01426 (Patent 8,692,659 B2)
IPR2015-01427 (Patent 8,692,659 B2)

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Petitioner’s argument is not persuasive. The ’287 patent states that the
console in Figure 16B provides “mounting surfaces for one or more vehicle
accessories, such as described in reference to previous embodiments.” Ex.
1012, col. 28, ll. 1–7 (emphasis added). Thus, the ’287 patent indicates that
previous embodiments provide examples of accessories that can be mounted
on the console in Figure 16B, but does not indicate that those are the only
accessories that can be mounted on the console. Id. We are not persuaded
that the patentee lacked possession of the claimed subject matter because a
forward facing camera is described later in the ’287 patent.
B. Reasons for Combining Schofield and Klappenbach
In the Petition, Petitioner argued that it would have been obvious to
use the camera in Schofield rather than the sensor in Klappenbach because
the camera provides more functionality. Paper 2 (“Pet.”), 48. In the
Decision, we explained that we were not persuaded by Petitioner’s argument
because Petitioner only indicates why one of ordinary skill in the art would
select the camera in Schofield over the sensor in Klappenbach, not why it
would have been obvious to mount the camera in Schofield using the
fastening device and housing in Klappenbach. Dec. 12. Petitioner argues
that it was unreasonable for us to assume that one of ordinary skill in the art
would combine Blank and Schofield without the fastening device and
housing in Klappenbach because that would require “mount[ing] two
rearview mirrors to the same windshield.” Req. Reh’g 12. Petitioner’s
argument is not persuasive.
First, we did not determine or assume that it would have been obvious
to one of ordinary skill in the art to combine the cited teachings of Blank and
Schofield. See Dec. 9–13. Second, Petitioner argued in the Petition that it
IPR2015-01426 (Patent 8,692,659 B2)
IPR2015-01427 (Patent 8,692,659 B2)

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would have been obvious to combine the camera in Schofield with the
information display in Blank independent of any teachings in Klappenbach.
Pet. 46 (“A person of ordinary skill in the art at the time of purported
invention would have found it obvious to combine Blank with Schofield.”).
As a result, Petitioner’s argument in the Request for Rehearing that such a
combination would have been unreasonable was not presented previously in
the Petition, and we could not have misapprehended or overlooked it. Third,
Petitioner does not explain why combining Blank and Schofield without the
fastening device and housing in Klappenbach would necessarily result in
mounting two rearview mirrors to the same windshield. Req. Reh’g 12. For
example, Petitioner does not explain why one of ordinary skill in the art
would not combine Blank and Schofield by mounting the camera in
Schofield to the windshield using bracket 34 without rearview mirror 30.
Id.; Ex. 1007, col. 3, ll. 64–67, Fig. 1; see KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
In the Petition, Petitioner argued that it would have been obvious to
use the fastening device and housing in Klappenbach to mount the camera in
Schofield because the housing in Klappenbach would advantageously seal
the components of the camera in Schofield to prevent intrusion of elements
from the environment. Pet. 48. In the Decision, we explained that we were
not persuaded by Petitioner’s argument because Schofield teaches that the
camera disclosed therein already is protected from environmental elements.
Dec. 12. Petitioner argues that we overlooked the fact that the housing in
Klappenbach prevents environmental contamination that may occur inside
the vehicle, such as from dust. Req. Reh’g 14. Petitioner’s argument is not
IPR2015-01426 (Patent 8,692,659 B2)
IPR2015-01427 (Patent 8,692,659 B2)

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persuasive. As we explained in the Decision, Schofield teaches that the
housing and location of the camera already are sufficient to substantially
eliminate environmental dirt and moisture. Dec. 12 (citing Ex. 1007, col. 3,
l. 64–col. 4, l. 4).
In the Petition, Petitioner argued that it would have been obvious to
use the fastening device and housing in Klappenbach to mount the camera in
Schofield because the fastening device in Klappenbach can be preinstalled.
Pet. 48–49. In the Decision, we explained that we were not persuaded by
Petitioner’s argument. Dec. 12. Petitioner argues that we misapprehended
the proposed combination. Req. Reh’g 15. Specifically, Petitioner contends
that “[t]he argument is not that Schofield’s housing and bracket 32 would be
incorporated into Klappenbach’s module, but that Schofield’s camera
replaces the rain sensor in Klappenbach’s housing.” Id. Petitioner’s
argument is not persuasive. We did not misapprehend the proposed
combination. As explained in the Decision, we determined that Petitioner
had not shown sufficiently that it would have been obvious to use the
fastening device and housing in Klappenbach to mount the camera in
Schofield. Dec. 12–13.
Petitioner also argues that we only characterized Schofield as teaching
a vehicle headlight dimming control, and, thus, overlooked “the fact that
Schofield’s control is also a rain sensor.” Req. Reh’g 12–13. Petitioner’s
argument is not persuasive. Petitioner argued in the Petition that
“Schofield’s camera based rain sensor provided added functionality in
controlling headlights and safety warnings as compared to Klappenbach’s
rain sensor.” Pet. 48 (emphasis added). Because Petitioner expressly relied
on the headlight control functionality taught in Schofield, we are not
IPR2015-01426 (Patent 8,692,659 B2)
IPR2015-01427 (Patent 8,692,659 B2)

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persuaded that we erred in characterizing the camera in Schofield as being,
inter alia, a vehicle headlight dimming control. Further, in the Decision, we
did not rely on any differences between a vehicle headlight dimming control
and a rain sensor as the basis for our determination. Dec. 12–13.
Moreover, in the Decision, we also determined that Petitioner did not
show sufficiently that the proposed combination of Blank, Schofield, and
Klappenbach would have taught or suggested the limitation “said structure is
configured to accommodate a forward facing camera.” Dec. 11. Petitioner
does not identify any error in that determination. See Req. Reh’g 11–15.
Thus, even assuming arguendo that it would have been obvious to combine
Blank, Schofield, and Klappenbach, Petitioner still does not show
sufficiently that the proposed combination would have taught or suggested
all the limitations of the challenged claims.
III. CONCLUSION
The Request for Rehearing does not demonstrate that we
misapprehended or overlooked any matters raised in the Petition.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Request for Rehearing is denied.

IPR2015-01426 (Patent 8,692,659 B2)
IPR2015-01427 (Patent 8,692,659 B2)

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PETITIONER:

Timothy K. Sendek
Allan Sternstein
A. Justin Poplin
Dan Cleveland Jr.
LATHROP & GAGE LLP
TSendek@lathropgage.com
Patent@lathropgage.com
JPoplin@lathropgage.com
dcleveland@lathropgage.com

PATENT OWNER:

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

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