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

Patent Trial and Appeal Board

Aug 27, 2014

13525763 (P.T.A.B. Aug. 27, 2014)

Trials@uspto.gov Paper 21
Tel: 571-272-7822 Entered: August 27, 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 IPR2014-00294
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 11, “Pet.”), namely claims 34, 39–48, and 50–54 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 34, 39–48, and 50–54. 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 39, 42, 44, 48, 50, 51, and 53 – Obviousness Over Bottesch, Yanagawa,
and Vellacott
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 2.
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In the Decision, we concluded that the Petition failed to explain the exact
combination of the three references that Petitioner relies upon to render claims 39,
42, 44, 48, 50, 51, and 53 unpatentable under this ground. Decision 15, 26–28. In
coming to this conclusion, with respect to independent claim 39, we observed that
the Petition states initially that Bottesch is the primary reference for the first recited
CMOS photosensor array limitation (Pet. 19–20), but then summarizes Petitioner’s
position as “Bottesch and Yanagawa, each of which 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 25–26). 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 39. The
Petition added further ambiguity by citing multiple references for additional
photosensor array and control limitations recited in claim 39 without explaining
how one of ordinary skill in the art would have combined the alleged disclosure to
satisfy these additional limitations. See Pet. 21–24. Thus, we were left to
speculate on the exact combination of references required to teach or suggest
multiple limitations recited in the claims at issue, which we declined to do.
Decision 26–28.
In its Rehearing Request, Petitioner asserts that Bottesch is the primary
reference and that Petitioner relies on Yanagawa and Vellacott 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 2. Petitioner argues that the
Petition relied primarily on Bottesch for the photosensor array limitations recited in
claim 39 and “utilized the other references to emphasize the commonality of the
limitations.” Id. at 3. We are not persuaded by these arguments because they were
not presented in the Petition. For example, Petitioner argues that for a “control”
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limitation of claim 39, “portions of Yanagawa and Vellacott . . . merely emphasize
the structure similarities” in all of the applied references. Req. Reh’g 4 (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,” but does not explain that this evidence is “merely [to]
emphasize structure similarities.” Pet. at 23–24.
Moreover, we also 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 2) sheds light on the exact combination
of references Petitioner relies upon to show obviousness. Even assuming that a
claimed structure may be commonly disclosed in Bottesch, Yanagawa, and
Vellacott, this commonality only indicates that Petitioner could rely on one or
more of the references to teach or suggest the claimed structure. Petitioner must
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 2 (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
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
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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))).
Petitioner further contends that Bottesch teaches “wherein said control,
responsive to an output of said photosensor array, determines an ambient light
level present at the equipped vehicle,” as recited in claim 39. Req. Reh’g 4. We
did not overlook this argument in reviewing the Petition. Decision 28. We
considered Petitioner’s argument, but concluded that the Petition also asserts that
“all of the applied references disclose a control having an image processor for
analyzing image data captured by a photosensor array.” Id. Therefore, the
question remained as to “how Bottesch’s teaching applies to the three references
(including Bottesch) cited to teach the recited ‘control.’” Id.
Furthermore, we disagree with the characterization of the Decision as
assuming that Yanagawa, Vellacott, and Zheng are necessary references for
claim 1. Req. Reh’g 4. This is precisely the type of assumption we declined to
make. See Decision 14–15 (“[W]e decline to speculate as to how four references
teaching different systems could apply to . . . claim 1.”).
2. Claims 50, 51, and 53
In the Decision, we further denied Petitioner’s challenge of independent
claim 50 and its dependent claims 51 and 53 because the Petition’s analysis of
certain “control” limitations did not include a sufficient reason for why one of
ordinary skill in the art would have combined Yanagawa’s alleged teaching with
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Bottesch or Vellacott. Decision 30. In the Request for Rehearing, Petitioner
contends that (1) the Petition states Bottesch teaches use of “any other photo
sensitive device,” and (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.” Req. Reh’g 5.
Petitioner maintains that this is sufficient to show that Yanagawa is a “suitable
equivalent for the particular photosensor arrays embodiments of Bottesch.” Id.
(citing Pet. 18).
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 discussed on pages 31 and 32 of the Petition. On those pages,
the Petition’s analysis does not include any reason for combining the applied
references. Pet. 31–32. 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 31–32 of the Petition. Moreover, in
coming to our conclusion, we considered the Petition’s arguments that portions of
Yanagawa’s system may be substituted for portions of Bottesch; however, we
found these arguments unpersuasive. Decision 30. Thus, Petitioner’s contention is
merely a disagreement with our decision. Disagreement with the decision is not a
sufficient basis on which to request rehearing.
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B. Claims 34, 41, 43, 45–47, 52, and 54
For claims 34, 41, 43, 45–47, 52, and 54, the Petition presented many of the
same arguments discussed above for independent claim 39. In the Decision, we
concluded that for the same reasons discussed for claim 39, we were not persuaded
that Petitioner had demonstrated a reasonable likelihood of prevailing as to claims
34, 41, 43, 45–47, 52, and 54. Decision 30–33. We further concluded that the
Petition’s reliance on the alleged teachings in Aikins, Kakinami, Mietzler,
Venturello, Tadashi, and/or Zheng did not persuade us otherwise. See id. at 32–33.
In its Request for Rehearing, Petitioner incorporates arguments discussed
above with respect to independent claims 39 and 50 and adds that the Petition
clearly states obviousness challenges based on Aikins, Kakinami, Mietzler,
Venturello, Tadashi, and/or Zheng as secondary references. Req. Reh’g 5–7. For
the reasons discussed above for claims 39 and 50, we are not persuaded that we
abused our discretion in concluding that the Petition failed to demonstrate a
reasonable likelihood that Petitioner would prevail on its challenges to claims 34,
41, 43, 45–47, 52, and 54. See Decision 30–33.
C. Petitioner’s Arguments Regarding the “More Than” Limitation
In the Decision, we further denied Petitioner’s challenge of claim 40 because
Petitioner did not show that the cited portions of Bottesch, Vellacott, and Zheng
teach the following limitation of claim 40:
wherein 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.
Decision 32. As part of our review, we construed this limitation to require that the
control perform the recited analysis after an object exterior of the equipped vehicle
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is determined to be present. Id. at 8–10. Applying this claim construction, we
were not persuaded that Petitioner has shown a reasonable likelihood of prevailing
on the assertion that Bottesch, Vellacott, Yanagawa, and Zheng render claim 40
unpatentable under 35 U.S.C. § 103(a). Id. at 18–20, 32.
In the Rehearing Request, Petitioner contends Bottesch satisfies this
limitation because it illustrates monitoring segmented areas of a photocell array.
Req. Reh’g 7. Even assuming that Bottesch provides this teaching, which we
considered in the Decision, the Petition does not explain sufficiently how this
disclosure teaches or suggests a control that performs the recited analysis of
claim 40 after determining the presence of an object. Decision 19–20, 32.
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 8–9. 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. 43 (citing Ex. 1107-010, 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 8.
We are not persuaded by these arguments because Petitioner did not make
them in the Petition. Pet. 43. 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. § 42.104(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.
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D. Petitioner’s Arguments Regarding a Reason to Combine
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 and Vellacott.” Req. Reh’g 11. 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”; and
(3) Vellacott teaches its sensor/imputer provides a single integrated architecture.
Id. at 9–10.
Again, as discussed above, we concluded in the Decision that the Petition’s
analysis of particular control limitations in claim 50 did not provide a sufficient
reason for combining Yanagawa with other references. Indeed, pages 31 and 32 of
the Petition do not provide any reason one of ordinary skill in the art would have
combined the alleged disclosure in Yanagawa with another reference. Also
discussed above, we found the Petition’s general statements about equivalent
substitution to be conclusory and unpersuasive. Petitioner’s Request for Rehearing
has not persuaded us otherwise.
Additionally, for both independent claims 39 and 50, and respective
dependent claims, 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, 28–29. Petitioner contends that the Assignee of the ’689 patent,
Donnelly Corp., was a customer for the Vellacott device. Req. Reh’g 10 n. 4; see
Ex. 1106-004. Be that as it may, we are unpersuaded that the identity of Donnelly
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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.
E. Petitioner’s Arguments Regarding the Declaration of Dr. Miller
Petitioner contends the Decision constitutes an abuse of discretion because it
“summarily dismiss[es] the expert declaration of Dr. Miller.” Req. Reh’g 11.
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 12.
We did not overlook the testimony of Dr. Miller cited by Petitioner in the
Petition. We considered the evidence and argument presented in the Petition, but
found that the cited portions Dr. Miller’s declaration repeated the same
unpersuasive conclusory statements presented in the Petition for combining
Bottesch, Yanagawa, Vellacott, and Zheng. Decision 17 n.4. Thus, Petitioner’s
contention is merely a disagreement with our decision, which is not a sufficient
basis for a 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