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

Patent Trial and Appeal Board

Sep 17, 2015

13936699 (P.T.A.B. Sep. 17, 2015)

Trials@uspto.gov Paper 8
Tel: 571-272-7822 Entered: September 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

TRW AUTOMOTIVE U.S. LLC,
Petitioner,

v.

MAGNA ELECTRONICS, INC.,
Patent Owner.
_______________

Case IPR2015-00951
Patent 8,637,801 B2
_______________

Before JAMES P. CALVE, RICHARD E. RICE, and
BART A. GERSTENBLITH, Administrative Patent Judges.

RICE, Administrative Patent Judge.

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

I. INTRODUCTION
TRW Automotive U.S. LLC (“Petitioner”) filed a Petition (Paper 2,
“Pet.”) requesting an inter partes review of claims 1–20 (“the Challenged
Claims”) of U.S. Patent No. 8,637,801 B2 (Ex. 1002, “the ’801 Patent”).
Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response
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(Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314,
which provides that an inter partes review may not be instituted “unless . . .
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
As Petitioner has not shown a reasonable likelihood that it would prevail
with respect to at least one of the Challenged Claims, we do not institute an
inter partes review with respect to the ’801 Patent.
A. Related Proceedings
We are informed that Petitioner is named in a federal district court
case involving the ’801 Patent (Magna Electronics Inc. v TRW Automotive
Holdings Corp., et al., Case 1:13-cv-00687 (W.D. Mich. 2013)). Pet. 3;
Paper 5, 1.
B. The ’801 Patent
The ’801 Patent, titled “Driver Assistance System for a Vehicle,”
issued from U.S. Application No. 13/936,699, filed July 8, 2013. Ex. 1002,
at [54], [21], [22]. The ’801 Patent relates to a system for controlling the
headlights of vehicles. Id. at 1:32–34. Figure 1 of the ’801 Patent is
reproduced below.

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Figure 1 is a side elevation view depicting headlight dimming control
12. Ex. 1002, 3:27–28, 52–54. Headlight dimming control 12 comprises:
imaging sensor module 14, which senses light from a scene forward of
vehicle 10; imaging control circuit 13, which receives data from sensor 14;
and vehicle lighting control logic module 16, which exchanges data with
control circuit 13 and controls headlamps 18 for the purpose of modifying
the headlight beam. Id. at 3:54–60. As illustrated in Figure 1, imaging
sensor module 14 and interior rearview mirror 30 are mounted by bracket 34
to the vehicle’s windshield 32. Id. at 4:12–16.
Imaging sensor module 14 includes photosensing array 38. Id. at
4:32–37. Photosensing array 38 may be a complementary-metal-oxide-
semiconductor (“CMOS”) array. Id. at 8:47–51.
The Specification teaches “examining light sources pixel-by-pixel”
such that “relatively small light sources may be detected at great distances in
order to dim the headlights well before they become a nuisance to the driver
of the vehicle ahead of the control vehicle.” Id. at 10:27–32. “This is
accomplished, according to a preferred embodiment, by utilizing an imaging
sensor made up of an array of photosensing elements in a compact design
which responds to light sources in a scene forward of the vehicle.” Id. at
10:33–37.
As also taught in the Specification, pattern recognition may be used to
assist detection of headlights, taillights, and other objects of interest. Id. at
11:4–8. Further, according to the Specification, “a high level of ‘non-
qualified’ light sources; namely, light sources that are not headlights or
taillights, as well as ‘qualified’ light sources can be used to determine a
measurement of the activity level around the vehicle.” Id. at 12:17–22. The
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Specification states that a high activity level around the vehicle is an
indication that “the vehicle is in an urban environment.” Id. at 12:22–23.
The Specification describes use of an “activity counter” to determine
the activity level around the vehicle:
An activity counter is established which represents a total
number of pixels, or pixel groups, whose red, green, or blue
components exceed a threshold. The threshold is set to a
relatively low value, namely just above the noise floor. This
counter, which registers any real detected source, is reset and
retabulated every frame, preferably during the exposure period
for detecting taillights. If the activity counter exceeds a
particular value, then a high activity environment is detected.

Id. at 12:24–33. As stated in the Specification, one use of information
indicative of a high activity environment “would be to inhibit the control
from switching the vehicle’s headlights from a low-beam state to a high-
beam state unless a low activity condition exists for awhile.” Id. at 12:33–
36.
C. Illustrative Claim
Claims 1, 14, and 17 are independent. Claims 2–13 depend, directly
or indirectly, from claim 1; claims 15 and 16 depend directly from claim 14;
and claims 18–20 depend, directly or indirectly, from claim 17. Claim 1 is
illustrative of the claimed subject matter, and is reproduced below:
1. A driver assistance system for a vehicle, said
driver assistance system comprising:
an imager comprising a CMOS photosensor array of
photosensor elements;
wherein said imager is disposed at or proximate to an in-
cabin portion of a windshield of a vehicle equipped with said
driver assistance system, and wherein said imager has a forward
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field of view to the exterior of the equipped vehicle through the
windshield of the equipped vehicle;
wherein said CMOS photosensor array is operable to
capture image data;
a control comprising an image processor;
wherein said driver assistance system identifies objects in
said forward field of view of said imager via processing of
captured image data by said image processor;
wherein, at least in part responsive to processing of
captured image data by said image processor, a determination is
made that the equipped vehicle is being operated in an urban
environment; and
wherein, responsive to said determination that the
equipped vehicle is being operated in an urban environment,
operation of a driver assistance function of the equipped vehicle
is inhibited.
Id. at 12:61–13:17.
D. The Asserted References
Petitioner relies upon the following references (Pet. 2–3):
Reference Patent No./Title Date Exhibit
Schofield PCT WO 94/19212 Sept. 1, 1994 Ex. 1006
Vellacott
Oliver Vellacott, CMOS in
Camera, IEE Review, 111-
114, © IEE 1994
May 1994 Ex. 1004
Kenue US 4,970,653 Nov. 13, 1990 Ex. 1005
Kim EP 0 176 615 A1 Apr. 9, 1986 Ex. 1007
Muirhead
Ian Muirhead, Developments
in CMOS Camera
Technology, IEE Colloquium
on Integrated Imaging
Sensors and Processing 5/1-
5/4, Dec. 5, 1994, © IEE
1994 Ex. 1008
Slotkowski US 5,182,502 Jan. 26, 1993 Ex. 1013
Imaide US 4,688,085 Aug. 18, 1987 Ex. 1014
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E. The Asserted Grounds
Petitioner challenges claims 1–20 of the ’801 Patent on the following
grounds (Pet. 2–3):

References Basis Claim(s) Challenged
Schofield PCT, Vellacott, and
Kenue
§ 103(a) 1, 4, 5, 9, and 11–13
Schofield PCT, Vellacott,
Kenue, and Kim
§ 103(a) 2, 14, and 16
Schofield PCT, Vellacott,
Kenue, and Muirhead
§ 103(a) 6–8 and 10
Schofield PCT, Vellacott,
Kenue, Kim, and Muirhead
§ 103(a) 15 and 17–20
Schofield PCT, Vellacott,
Kenue, and Slotkowski
§ 103(a) 3
Schofield PCT, Vellacott,
Kenue, and Imaide
§ 103(a) 6
Schofield PCT, Vellacott,
Kenue, Kim, Muirhead, and
Imaide
§ 103(a) 20

II. ANALYSIS
We turn now to Petitioner’s asserted grounds of unpatentability to
determine whether Petitioner has met the threshold standard of 35 U.S.C.
§ 314(a) for instituting review.
A. Claim Construction
In an inter partes review, the Board gives claim terms in an unexpired
patent their broadest reasonable interpretation in light of the specification of
the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re
Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir. 2015)
(“We conclude that Congress implicitly approved the broadest reasonable
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interpretation standard in enacting the AIA” and “the standard was properly
adopted by PTO regulation.”). Under the broadest reasonable interpretation
standard, and absent any special definition, claim terms are given their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a
claim term must be set forth with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We interpret
certain claim limitations as follows:
1. “a determination is made that the equipped vehicle
is being operated in an urban environment”
Claims 1, 14, and 15 each require that, inter alia, “at least in part
responsive to processing of captured image data by said image processor, a
determination is made that the equipped vehicle is being operated in an
urban environment” (emphasis added). Petitioner contends that “[t]he
phrase ‘a determination is made that the equipped vehicle is being operated
in an urban environment’ should . . . be construed as simply requiring no
more than a count of pixels or pixel groups within the array that measure
light levels above a threshold within an arbitrary period.” Pet. 6. Petitioner
argues in support of its proposed construction as follows:
The ’801 Patent describes that the determination of “the vehicle
is in an urban environment” is merely a matter of counting the
number of pixels of the two-dimensional photosensor that
measure light above an arbitrary threshold. [Ex. 1002, 12:17–
44]. When this count, or “activity level,” is above another pre-
selected number, the “determination” is made that the vehicle is
in an urban environment.
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Id. at 5–6.1
Patent Owner disagrees, and argues that Petitioner’s proposed
construction “does not result in a scope commensurate with the claim
language.” Prelim. Resp. 11. Patent Owner contends that “‘a determination
is made that the equipped vehicle is being operated in an urban environment’
should be construed to mean a determination is made that the equipped
vehicle is being operated in a surrounding condition indicative of an
urban/city environment.” Id. at 11–12. Patent Owner argues in support of
its proposed construction that “[t]he plain and ordinary meaning of an urban
environment is a surrounding condition indicative of a city or similar built
up region such as found in towns and suburbs.” Id. at 10–11 (citing
Ex. 2004, 3, 4).
We agree with Patent Owner’s arguments. On this record, therefore,
we determine that the broadest reasonable interpretation consistent with the
Specification of “a determination is made that the equipped vehicle is being
operated in an urban environment” is a determination is made that the
equipped vehicle is being operated in a surrounding condition indicative of
an urban/city environment.
2. Other Claim Terms
None of our determinations regarding Petitioner’s proposed grounds
of unpatentability requires us to interpret expressly any other claim term.

1For purposes of our Decision, we accept Petitioner’s contention that a
person having ordinary skill in the art (“POSA”) “would have had at least
the qualifications of or equivalent to either a[n] undergraduate degree in
electrical engineering or mechanical engineering with course work or
research in automobile accessory systems with at least two years of work
making automobile accessory systems.” Pet. 12–13 (citing Ex. 1010 ¶ 8).
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B. Asserted Obviousness
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) 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 invention was made to a person having ordinary skill in the
art (“POSA”) to which the subject matter pertains. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007). A patent claim composed of several
elements, however, is not proved obvious merely by demonstrating that each
of its elements was known, independently, in the prior art. Id. at 418. In
analyzing the obviousness of a combination of prior art elements, it can be
important to identify a reason that would have prompted one of skill in the
art to combine the elements in the way the claimed invention does. Id. A
precise teaching directed to the specific subject matter of a challenged claim
is not necessary to establish obviousness. Id. Rather, “any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” Id. at 420. The question of obviousness is resolved on the basis
of underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations, when in evidence. Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In this case, Petitioner contends that independent claims 1, 14, and 17
are unpatentable as obvious. Pet. 2. Specifically, Petitioner contends that
claim 1 would have been obvious over Schofield PCT, Vellacott, and Kenue;
that claim 14 would have been obvious over Schofield PCT, Vellacott,
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Kenue, and Kim; and that claim 17 would have been obvious over Schofield
PCT, Vellacott, Kenue, Kim, and Muirhead. Id. Further, the grounds on
which Petitioner challenges dependent claims 2–13, 15, 16, and 18–20 are
based on independent claim 1, 14, or 17 being obvious as set forth above.
See id. at 27–57. For the reasons given, we are not persuaded that Petitioner
has met its burden with respect to any of the Challenged Claims.
1. Overview of Asserted References
a. Schofield PCT
Schofield PCT, titled “Automatic Rearview Mirror and Vehicle
Interior Monitoring System Using a Photosensor Array,” relates to an
automatic rearview mirror system for automotive vehicles that automatically
changes reflectance level in response to glare-causing light, “and more
particularly relates to an improved automatic rearview mirror system using
only a rearwardly facing sensor.” Ex. 1006, 1:15–20 (emphasis added).
Schofield PCT criticizes prior art automatic rearview mirrors, in which
“light generally forward of the mirror or vehicle was incident on [a] second
photocell.” Id. at 3:13–22 (emphasis added). Schofield PCT teaches:
Consequently, there is a need for an automatic rearview mirror
system for an automotive vehicle having improved reliability
and low cost, which accurately determines or otherwise
discriminates light levels that the driver will experience as glare
without the need for a separate forwardly facing photocell.

Id. at 5:28–33 (emphasis added); see id. 7:20–25 (“another object of the
present invention [is] to provide an automatic rearview mirror system that
accurately determines light levels that the driver will experience as glare
without the need for a separate forward facing sensor or other non-
rearwardly facing photocells”).
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In keeping with these teachings, Schofield PCT discloses an
embodiment comprising photosensor 2, which is mounted facing rearwardly
of rearview mirror 1. Ex. 1006, 15:33–35, Fig. 1A. Photosensor 2
comprises photosensor array 32. Id. at 16:6–10. “A photosensitive surface
of each of the photosensor elements 32a (shown in Fig. 5) of the photosensor
array 32 senses light levels or image information in a predetermined field of
view encompassing an area located rearwardly of the rearview mirror 1.” Id.
at 16:12–17.
b. Vellacott
Vellacott chronicles research and development of the “imputer,”
which utilizes complementary-metal-oxide-semiconductor (“CMOS”)
imaging technology. See Ex. 1004, 113–14. One application of the imputer,
as disclosed in Vellacott, is an electro-chronic rear-view mirror that
automatically reduces headlamp glare from behind. Id. at 114. Vellacott
states:
The imputer was housed inside the rear-view mirror[,] . . .
positioned to look out the rear and sides of the car in a 90° arc,
. . . [and] programmed to analyse this image to recognise when
and where headlamps are present in the field of view.
Id.
c. Kenue
Kenue, titled “Vision Method of Detecting Lane Boundaries and
Obstacles,” discloses a system using video camera 10 to detect lane markers
in front of a vehicle. Ex. 1005, Abstract, 2:28–32. The video camera is
mounted in a vehicle “to capture the driver’s view of the road ahead.” Id. at
2:30–32. The camera output is coupled to computer 14 and utilized by
display 16, obstacle warning alarm 18, and “any device using the lane
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boundary information for vehicle guidance, performance monitoring or
headway control, for example.” Id. at 2:34–39.
2. Petitioner’s Contentions with Respect to Claims 1, 14, and 17
a. “said imager has a forward field of view to the exterior of the
equipped vehicle through the windshield of the equipped vehicle”
Petitioner contends, as to each of independent claims 1, 14, and 17,
that Schofield PCT and Kenue would have been combined to orient the
Schofield PCT camera (asserted “imager”) to be forward-facing such that
“said imager has a forward field of view to the exterior of the equipped
vehicle through the windshield of the equipped vehicle,” as required by the
claims.2 Pet. 15–21, 33, 47. Petitioner acknowledges that Schofield PCT
“does not explicitly disclose that the camera faces forward to view the
exterior through the windshield of the equipped vehicle,” but argues that:
given that this limitation of Claim 1 of the ’801 Patent differs
from Schofield PCT only in its manner of use (camera
orientation), but is otherwise structurally identical to Schofield
PCT, this limitation presents nothing more than a simple,
obvious reorientation of the parts disclosed by Schofield PCT.
Id. at 15–16 (citing Ex. 1006, Fig. 5). Petitioner further argues that forward-
facing cameras, such as disclosed in Kenue, were well-known in the art at
the time of the invention, and that re-orienting the Schofield PCT camera to
be forward-facing as disclosed by Kenue would have been a predictable use
of a known technique to improve a similar device in the same way. Id. at

2 Petitioner relies on the combination of Schofield PCT and Vellacott to
teach “said imager,” i.e., “an imager comprising a CMOS photosensor array
of photosensor elements.” Pet. 13.
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17–18 (citing Ex. 1005, 2:31–32; Ex. 1010 ¶¶ 55–56). Petitioner
additionally argues:
[F]orward-facing sensors would have predictably been able to
view the forward scene exterior to the vehicle thereby allowing
Schofield PCT’s device to be appropriate for additional
applications other than those expressly disclosed, as desired by
Schofield PCT. (See 1010 at ¶ 57; citing 1006-029 at 26:14-18)
(“The photosensor array 32 may also be positioned in other
locations . . . or any other appropriate location depending on
the particular application.”).
Id. at 19.
Additionally, Petitioner contends that “[t]urning Schofield PCT’s
camera to face forward, as shown by Kenue, would therefore have been also
‘obvious to try.’” Id. Petitioner argues that re-orienting Schofield PCT’s
camera to face forward would have “constituted nothing more than the
selection from a finite number of identified, predictable solutions, with a
reasonable expectation of success.” Id. (citing KSR, 550 U.S. at 421).
b. “a determination is made that the equipped vehicle
is being operated in an urban environment”
For the limitation “a determination is made that the equipped vehicle
is being operated in an urban environment,” recited by each of the
independent claims, Petitioner draws our attention to Schofield PCT’s
disclosure of related art, particularly, the disclosure that prior art automatic
rearview mirrors using a rearward-facing sensor to change mirror reflectance
“would become increasingly sensitive and even ‘lock up’ . . . as the driver
encountered significantly higher light levels in town or city driving.” Pet.
23–24 (quoting Ex. 1006, 2:22–27). Petitioner argues that Schofield PCT
teaches “a functional programming method to address this problem.” Id. at
24. Petitioner relies on the description in Schofield PCT of a logic circuit
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that determines peak light signal P(z) for each zone or sub-array S(X) of
photosensor matrix array 32. Id. at 24–25 (citing Ex. 1006, 43:11–28). As
disclosed in Schofield PCT, the peak light signal “may be determined by
counting or summing the number of occurrences where the digital value for
a photosensor element signal is greater than a peak threshold value F for
each zone or sub-array S(X).” Ex. 1006, 43:13–19. “[T]he peak threshold
value F is selected to be in the range of about 200 to 255 [characteristic of
headlights] but is preferably 245.” Id. at 43:25–29. Petitioner argues that
Schofield PCT’s “method of counting light sources on the photosensor array,
in order to determine an ‘urban environment,’ . . . is substantively identical
to that described in the ’801 Patent specification.” Pet. 25; see Ex. 1010 ¶¶
66–69.
3. Patent Owner’s Responsive Contentions
Patent Owner responds that Petitioner “simply and utterly fails to
present a logical reason why a POSA would have reversed the imputer in
Schofield PCT’s electro-chromic mirror to face forward through a
windshield.” Prelim. Resp. 32. Patent Owner argues, for example, that
Schofield’s variable-reflectance rearview mirrors would not function as
intended if their rearward-facing sensor were re-oriented to face forward as
Petitioner contends. Id. at 33. In that regard, Patent Owner states:
If [Petitioner] is allowed to turn Schofield PCT’s sensor
around, the resulting system will dim the rear-view and wing
mirrors based on glare from in front of the vehicle and would
offer no relief for the glare impinging on the actual rearview
mirror from behind the vehicle. No longer would the mirror
dim “automatically to reduce glare to the driver” (for rear
approaching vehicles). Similarly, if the sensor were to face
forward, the system would cease to monitor the interior of the
vehicle such as for intrusion or for seat occupancy.
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Id.
Patent Owner also argues that Petitioner has failed to show that
Schofield PCT teaches the limitation “a determination is made that the
equipped vehicle is being operated in an urban environment.” Prelim.
Resp. 22–25. Patent Owner asserts:
[Petitioner]’s reliance on Schofield PCT’s alleged “method of
counting light sources on the photosensor array, in order to
determine an ‘urban environment’” is misplaced. Pet. 25.
Counting of photosensor elements is not enough as it does not
determine whether or not the vehicle is operated in an urban
environment. Schofield PCT’s counting or summing is done to
detect light sources that may be headlights, and is not done to
determine the environment in which the vehicle is being driven.
Id. at 24.
4. Analysis
Petitioner’s arguments as to why it would have been obvious to
change the orientation of Schofield PCT’s imager from rearward-facing to
forward-facing are not persuasive. An analysis under 35 U.S.C. § 103(a)
requires more than “mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Petitioner has not explained
sufficiently why a forward-facing camera orientation, such as disclosed by
Kenue, would have improved the automatic rearview mirror system
disclosed by Schofield PCT. In particular, Petitioner has not persuaded us
that a forward-facing camera could have been used to detect glare-causing
light impinging on the rearview mirror, as required in Schofield PCT’s
system. See Prelim. Resp. 33. The testimony of Petitioner’s declarant,
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Jeffrey A. Miller, does not shed any light on this issue. See Ex. 1010 ¶¶ 54–
57.
As discussed supra in section II.B.2.a, Petitioner relies on the
statement in Schofield PCT that “photosensor array 32 may also be
positioned in other locations . . . or any other appropriate location depending
on the particular application.” Pet. 19 (quoting Ex. 1006, 26:14–18); see Ex.
1010 ¶ 57. The context of this statement is use of photosensor array 32 in an
automatic rearview mirror and vehicle intrusion detection system. Ex. 1006,
26:4–18. Schofield PCT discloses that “if the photosensor array 32 is
located in the rearview mirror 1, the video signal may be used to monitor the
vehicle’s interior to detect unauthorized intrusion into the vehicle.” Id. at
25:16–19. Schofield PCT further discloses that “photosensor array 32 may
be used to monitor the vehicle interior or compartment in a vehicle interior
monitoring system,” and that “[t]his monitoring capability may be used in a
vehicle intrusion detection system or in a compartment image data storage
system, either in combination with the automatic rearview mirror system or
as an independent system.” Id. at 25:32–26:1.
Schofield PCT states that rearview mirror 1 provides a good location
from which photosensor array 32 can monitor the vehicle interior because it
“is sufficiently high and far forward so as to provide a very good view of the
vehicle interior, including the front and rear seat areas, front and rear door
areas and hatchback or rear cargo door areas.” Id. at 26:4–14. In this
context, Schofield PCT then states that “photosensor array 32 may also be
positioned in other locations, including the headliner and headliner console
areas, for example, or any other appropriate location depending on the
particular application.” Id. at 26:14–18. Nothing in that statement suggests
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locating the photosensor array to have “a forward field of view to the
exterior of the equipped vehicle through the windshield of the equipped
vehicle,” as required by the claims. Indeed, viewed in its entirety, Schofield
PCT discourages use of forward-facing cameras in automatic review mirror
systems. See supra section II.B.1.a; Ex. 1006, 1:15–20, 3:12–22, 5:28–33,
7:20–25.
We also are not persuaded by Petitioner’s “obvious to try” argument.
See Pet. 19; see Ex. 1010 ¶¶ 59–61. Petitioner has not shown sufficiently
that a POSA would have had a good reason to change the rearward-facing
orientation of Schofield PCT’s camera. See Unigen Labs., Inc. v. Apotex,
Inc., 655 F3d. 1352, 1361 (Fed. Cir. 2011) (stating that “a combination is
only obvious to try if a person of ordinary skill has ‘a good reason to pursue
the known options’” (quoting KSR, 550 U.S. at 421)). Petitioner has not
shown, for example, that a forward-facing camera could have been used in
Schofield PCT’s automatic review mirror system without altering the
principle of operation of that system, which uses a rearward-facing camera
to reduce glare from headlights of vehicles behind the equipped vehicle and
to provide a means for intrusion detection. See Prelim. Resp. 33.
Additionally, we are not persuaded that Schofield PCT teaches the
limitation “a determination is made that the equipped vehicle is being
operated in an urban environment.” First, Petitioner has not persuaded us
that Schofield PCT’s “method of counting light sources on the photosensor
array” (see Pet. 25; Ex. 1010 ¶ 68) is a determination that the equipped
vehicle is being operated in a surrounding condition indicative of an
urban/city environment, as our claim interpretation requires. See supra
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section II.A.1. Petitioner relies on a proposed claim construction3 that we
have rejected. See id.; Pet. 6, 25. Second, Petitioner’s argument comparing
Schofield PCT’s method of counting light sources on the photosensor array
to the method described in the ’801 Patent Specification for determining a
high activity environment erroneously relies on the inventor’s disclosure,
which is not part of the prior art. See, e.g., W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To imbue one of
ordinary skill in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest that knowledge,
is to fall victim to the insidious effect of a hindsight syndrome wherein that
which only the inventor taught is used against its teacher.”). Moreover,
upon consideration of the competing arguments and evidence, Petitioner’s
assertion that the method described in Schofield PCT and the method taught
in the ’801 Patent Specification are “substantively identical” is not
persuasive. Compare Pet. 25 and Ex. 1010 ¶ 68 (asserting that “Schofield
PCT teaches a method of counting light sources on the photosensor array, in
order to determine an ‘urban environment,’ which method is substantively
identical to that described in the ’801 Patent specification”) with Prelim.
Resp. 24 (asserting that “Schofield PCT’s counting or summing is done to
detect light sources that may be headlights, and is not done to determine the
environment in which the vehicle is being driven”) and Prelim. Resp. 22

3 As discussed supra, in section II.A.1, Petitioner’s proposed claim
construction is that “a determination is made that the equipped vehicle is
being operated in an urban environment” requires “no more than a count of
pixels or pixel groups within the array that measure light levels above a
threshold within an arbitrary period.” Pet. 6.
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Patent 8,637,801 B2

19
(asserting that “a determination of an urban environment requires that the
count be above a threshold — not a measured light level”).
Petitioner does not contend that Vellacott, Kim, or Muirhead cure
these deficiencies in Schofield PCT and Kenue; accordingly, for the reasons
given, we determine that Petitioner has not demonstrated a reasonable
likelihood of prevailing with respect to its challenges to independent
claims 1, 14, and 17. Further, as Petitioner’s challenges to dependent
claims 2–13, 15, 16, and 18–20 do not cure the deficiencies in Schofield
PCT and Kenue discussed above in connection with the independent claims,
we determine that Petitioner also has not demonstrated a reasonable
likelihood of prevailing with respect to its challenge to dependent claims 2–
13, 15, 16, and 18–20.
III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has not
established a reasonable likelihood of prevailing on its challenges to:
claims 1, 4, 5, 9, and 11–13 as obvious over Schofield PCT, Vellacott, and
Kenue; claims 2, 14, and 16 as obvious over Schofield PCT, Vellacott,
Kenue, and Kim; claims 6–8 and 10 as obvious over Schofield PCT,
Vellacott, Kenue, and Muirhead; claims 15 and 17–20 as obvious over
Schofield PCT, Vellacott, Kenue, Kim, and Muirhead; claim 3 as obvious
over Schofield PCT, Vellacott, Kenue, and Slotkowski; claim 6 as obvious
over Schofield PCT, Vellacott, Kenue, and Imaide; and claim 20 as obvious
over Schofield PCT, Vellacott, Kenue, Kim, Muirhead, and Imaide.
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Patent 8,637,801 B2

20
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Petition for an inter partes review of
claims 1–20 of the ’801 Patent is denied, and no inter partes review will be
instituted pursuant to 35 U.S.C. § 314 as to any claim of the ’801 Patent on
any of the grounds of unpatentability alleged by Petitioner in the Petition.

IPR2015-00951
Patent 8,637,801 B2

21
PETITIONER:
Timothy K. Sendek
Allan Sternstein
Justin Poplin
Douglas W. Link
LATHROP & GAGE LLP
TSendek@LathropGage.com
Patent@lathropgage.com
JPoplin@LathropGage.com
Dlink@lathropgage.com

PATENT OWNER:

David Cornwell
Jason Eisenberg
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
davidc-PTAB@skgf.com
jasone-PTAB@skgf.com

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