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

Patent Trial and Appeal Board

Aug 11, 2014

12640425 (P.T.A.B. Aug. 11, 2014)

Trials@uspto.gov Paper 21
Tel: 571-272-7822 Entered: August 11, 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 IPR2014-00266
Patent 7,994,462 B2
_______________

Before JUSTIN T. ARBES, BENJAMIN D. M. WOOD, and
NEIL T. POWELL, Administrative Patent Judges.

WOOD, 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 (“TRW”) filed a request for rehearing
(Paper 19) (“Rehearing Request”) of our decision, dated June 26, 2014
(Paper 17) (“Decision”) instituting an inter partes review but denying
institution with respect to several of TRW’s proposed grounds of
unpatentability. Reh’g Req. 1. Specifically, TRW requests that we
reconsider our determination not to institute an inter partes review on the
following grounds: (1) claims 31 and 37 as anticipated by Kenue;
1

(2) claims 30-32, 34, and 37-41 as obvious over Yanagawa,
2
Bottesch,
3
and
Wilson-Jones;
4
(3) claims 43-46, 48, and 49 as obvious over Kenue and
Yanagawa; and (4) claim 35 as obvious over AURORA
5
and Kenue. Id.
For the reasons stated below, we grant TRW’s request as to the first of these
grounds, and deny the request as to the remaining grounds.
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

1
U.S. Patent No. 4,970,653 to Kenue, Ex. 1004.
2
JP S62-121837 to Yanagawa et al., Ex. 1005.
3
U.S. Patent No. 5,166,681 to Bottesch, Ex. 1006.
4
EP0640903A1 to Wilson-Jones et al., Ex. 1007.
5
Mai Chen, AURORA: A Vision-Based Roadway Departure Warning
System, 1995 IEEE/RSJ Int’l Conf. on Intelligent Robots and Systems (Aug.
9, 1995), Ex. 1009.
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(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 31 and 37
In its Petition, TRW alleged that Kenue anticipates claims 30, 31, 34,
37, and 38 of U.S. Patent No. 7,994,462 (“the ’462 patent”). Paper 2
(“Pet.”), 13-18, 29-34. We instituted inter partes review as to claims 30, 34,
and 38, but determined not to institute as to claims 31 and 37. Dec. 7-10.
TRW asserts that the latter determination was an abuse of discretion. Reh’g
Req. 2-5.
Claims 31 and 37 depend from claims 30 and 34, respectively, and
add, among other limitations, the limitation “wherein identification of
objects is enhanced by comparing image data of objects over successive
frames of said captured image data.” Ex. 1002, 15:48-52, 16:37-41
(emphasis added). Independent claim 1 contains a similar limitation:
“wherein said pattern recognition is enhanced by comparing image data of
objects over successive frames of said captured image data.” Id. at 13:12-
14. In its Petition, TRW argued that Kenue teaches this limitation because it
discloses the following:
[The] algorithms . . . dynamically define the search area for lane
markers based on the lane boundaries of the previous frame,
and provide estimates of the position of missing markers on the
basis of current frame and previous frame information. . . .
Moreover, the search area changes with marker position MP,
and increases in size if the marker was not found in the search
of the previous frame. . . . after the centroid of each marker is
calculated . . . if the markers are not found where expected . . .
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based on the previously detected lane geometry, the marker
locations from the previous frame are used.”
Pet. 18 (quoting Ex. 1004, 2:44-48, 4:27-29, 5:14-18). In its Preliminary
Response, Patent Owner Magna Electronics, Inc. (“Magna”) disagreed that
Kenue anticipates claims 31 and 37. Magna argued that Kenue does not
teach the limitation “wherein said pattern recognition is enhanced by
comparing image data of objects over successive frames of said captured
image data.” Prelim. Resp. 16 (quoting Ex. 1002, 15:48-52, 16:37-40
(emphasis added)). In other words, Magna’s argument was based on the
limitation in claim 1 rather than in claims 31 and 37.
In our Decision, we were not persuaded by TRW’s analysis. We
stated that
We agree with Magna that neither TRW nor [TRW’s declarant]
Dr. Miller explains sufficiently how [the cited passages from
Kenue] correspond to the limitation at issue. Kenue’s teaching
regarding comparing a “previous frame” with a “current frame”
is suggestive of “comparing image data of objects over
successive frames of said captured image data,” but it is not
self-evident how the quoted passages relate to “enhanc[ing]
pattern recognition.”
Dec. 10. Our analysis also was based, incorrectly, on the language of the
limitation as it appears in claim 1 rather than the language in claims 31 and
37. Therefore, we grant the Rehearing Request to consider whether Kenue
anticipates claims 31 and 37 based on the actual language of those claims.
Having done so, we are persuaded that TRW is reasonably likely to
show that Kenue anticipates claims 31 and 37. As we stated in the Decision,
“Kenue’s teaching regarding comparing a ‘previous frame’ with a ‘current
frame’ is suggestive of ‘comparing image data of objects over successive
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frames of said captured image data.’” Id. Further, based on the current
record, the comparison of previous-frame and current-frame image data is
performed to “enhance[]” the “identification of objects”—specifically, lane
markers— in that the “search area” for lane markers is “dynamically
define[d]” based on such comparison. Therefore, on the present record, we
institute inter partes review of claims 31 and 37 as anticipated by Kenue.
B. Claims 30-32, 34, and 37-41
In its Petition, TRW asserted that claims 30-32, 34, and 37-41 would
have been obvious over Yanagawa, Bottesch, and Wilson-Jones. Pet. 18-29,
34-45. TRW contended that Yanagawa discloses all of the limitations of
these claims except for the requirement of a “two-dimensional array of light
sensing photosensor elements,” which limitation TRW found in Bottesch.
Pet. 21. TRW asserted that a person of ordinary skill in the art would have
had a reason to combine Bottesch with Yanagawa because:
To include in the camera 11 of Yanagawa (’837) at the time of
the alleged invention a two-dimensional array of photo sensor
elements as shown in Bottesch (’681) is, under KSR, merely a
simple substitution of one known element for another to obtain
predictable results. Further, those skilled in the art would
consider it obvious to try to include such a two-dimensional
array in the camera 11 of Yanagawa (’837), as this selection
involves nothing more than choosing from a finite number of
identified, predictable solutions, with a reasonable expectation
of success.
Pet. 22 (citing MPEP § 2141; Ex. 1011 ¶ 23).
In the Decision, we were not persuaded that TRW was reasonably like
to prevail on this ground because it was based on “‘mere conclusory
statements’ that cannot support an obviousness rejection.” Dec. 13 (quoting
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KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (internal citation
omitted)).
TRW now claims that this determination was erroneous. Regarding
the simple-substitution rationale for combining Bottesch and Yanagawa,
TRW states that “Bottesch expressly taught the substitution of the two-
dimensional sensor array for the Yanagawa camera.” Reh’g Req. 7.
Regarding the obvious-to-try rationale, TRW asserts that Bottesch “teaches a
finite number of identified, predictable solutions.” Id. at 8.
TRW’s arguments do not persuade us that we abused our discretion in
denying institution on this ground. First, regarding the simple-substitution
rationale, TRW did not assert in the Petition that Bottesch “expressly taught
the substitution of the two-dimensional sensor array for the Yanagawa
camera.” Nor does TRW explain in the Rehearing Request why it waited
until then to make the assertion. We do not consider arguments
impermissibly raised for the first time in a Rehearing Request. A rehearing
request under 37 C.F.R. § 42.71(d) is not an opportunity to submit new
arguments that could have been submitted in the petition.
Moreover, even if we were to consider TRW’s new argument, we
would not find it persuasive, because TRW has not shown that Bottesch
does, in fact, expressly teach the substitution of its two-dimensional array for
the Yanagawa camera.
6
At best, the portions of Bottesch on which TRW

6
In its Petition, TRW suggests that a person of ordinary skill in the art
would have “include[d]” Bottesch’s two-dimensional array of photosensor
elements “in the camera 11 of Yanagawa,” (Pet. 22 (emphasis added)),
indicating that Bottesch’s array would replace a component of Yanagawa’s
camera. But in its Rehearing Request, TRW contends that a person of
ordinary skill would have substituted Bottesch’s array “for the Yanagawa
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relies suggest that a two-dimensional array could be used in Bottesch’s own
preferred embodiment. See Ex. 1006, 4:10-13, 6:57-61. In other words,
Bottesch may teach the two-dimensional sensor array not taught by
Yanagawa, but it does not itself provide a reason to use it in (or in place of)
Yanagawa’s camera.
Second, regarding the obvious-to-try rationale, TRW did not identify
any specific predictable solutions in the Petition. Nor does TRW clearly
identify such solutions in its Rehearing Request. Instead, TRW suggests that
Bottesch’s teaching of the commercial availability of CCD cells, a specific
type of photo sensitive device that Bottesch teaches can be used in its
invention, somehow constitutes market pressure to use Bottesch’s two-
dimensional sensor array. Reh’g Req. 8-9. We find this argument
unpersuasive.
TRW also suggests that we should have considered Wilson-Jones in
our analysis. Reh’g Req. 9-10. But TRW does not allege that Wilson-Jones
could be used as an alternative to Bottesch. Moreover, TRW stated in both
the Petition and Rehearing Request that Wilson-Jones is “not required” to
show that the claims at issue would have been obvious, but was asserted to
teach the “pattern recognition” limitation that Yanagawa also was alleged to
teach. Pet. 24; Reh’g Req. 10. Given the foregoing, we are not persuaded
that we abused our discretion in not discussing Wilson-Jones with respect to
the “two-dimensional array of light sensing photosensor elements”
limitation.

camera,” (Reh’g Req. 7), indicating that Bottesch’s array would replace
Yanagawa’s entire camera. TRW does not explain why it uses different
language in the Rehearing Request, or otherwise attempt to resolve this
apparent inconsistency.
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C. Claims 43-46, 48, and 49
In its Petition, TRW asserted that claims 43-46, 48, and 49 would
have been obvious over the combination of Kenue and Yanagawa. Pet. 48-
58. We did not institute on this ground because TRW’s reason to combine
these references—that doing so would be “nothing more than using known
techniques to improve similar devices in the same way”—was not supported
adequately. Pet. 51; see Dec. 14-15. TRW now asserts that this was error.
Reh’g Req. 10-12. First, TRW argues that “the Decision erroneously
concludes that the combination of Kenue with Yanagawa is ‘part of, and
necessary to’ TRW’s case for obviousness.” Id. at 10 (quoting Dec. 14).
According to TRW, Yanagawa was asserted in the Petition only as an
alternative to Kenue’s teaching of a specific limitation. Id. at 10-11. But
TRW never stated in the Petition that Yanagawa was presented only in the
alternative. Rather, the proposed ground on unpatentability was based on
the combination of Kenue and Yanagawa. See Pet. 48 (“Claims 43, 44, 45,
46, 48 and 49 are invalid under 35 U.S.C. § 103(a) (pre-AIA) as obvious
under Kenue (’653) in view of Yanagawa (’837)”). TRW’s contention that
Yanagawa was presented only in the alternative is, therefore, a new
argument, impermissibly raised for the first time in its Rehearing Request.
As stated above, rehearing requests under 37 C.F.R. § 42.71(d) are not
opportunities to present new arguments that could have been presented in the
petition.
Second, TRW argues that “to the extent Yanagawa may be required,
the proposed combination would merely involve a reprogramming of
Kenue’s system to accomplish the purposes specified in Yanagawa.” Reh’g
Req. 11. TRW goes on to argue how various teachings in Yanagawa and
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Kenue would have motivated a person of ordinary skill in the art “to
improve Kenue’s system in line with the technique taught by Yanagawa.”
Id. This analysis was not in the Petition, however, and therefore will not be
considered because it is raised impermissibly for the first time in the
Rehearing Request.
Even if we were to consider TRW’s new analysis, we would not find
it persuasive. TRW reasons that because Yanagawa teaches that it is
desirable to switch a vehicle’s headlights from high beams to low beams
when there is another vehicle ahead, and Kenue teaches that its system
detects “obstacles such as other vehicles,” a person of ordinary skill “would
thus be motivated to improve the imaging system of Kenue in line with the
technique taught by Yanagawa—that is, one of skill in the art would be
motivated to modify the imaging system of Kenue so that the equipped
vehicle’s headlights are switched from high beams to low beams when there
is an obstacle ahead.” Id. But Yanagawa makes clear that dimming high
beams would be helpful only under certain conditions, e.g., at night and
when the detected obstacle is another vehicle. See Ex. 1005 (English
Translation), 1-2 (“When driving an automobile at night, . . . headlights must
be switched to low beams so as not to obstruct the field of vision of the
driver of the oncoming vehicle or the driver of the vehicle traveling
ahead.”). TRW does not point us to any teaching in Kenue that suggests that
its system is used only under such conditions. On the contrary, a vehicle
equipped with Kenue’s system might be operated during the day and
therefore, not have its headlights on, or might be operated at night and detect
an obstacle that is not another vehicle, in which case the driver may want to
continue using the high beams.
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D. Claim 35
TRW argues that we erred in stating that “TRW’s proposed reasons to
combine . . . AURORA . . . with either Kenue or
Yanagawa/Bottesch/Wilson-Jones combination are based on conclusory
statements without supporting explanation.” Reh’g Req. 12. In the Petition,
TRW asserted that the proposed combinations “would be nothing more than
the use of a known technique to improve similar devices in the same way,”
and “such a combination would also be tantamount to combining prior art
elements according to known methods to yield predictable results.” Pet. 47.
TRW now alleges in the Rehearing Request that we “ignore[d] evidence
supporting TRW’s position.” Reh’g Req. 12. But the evidence we allegedly
ignored was asserted only to support the proposition that “[AURORA]
teaches that the detection of lane markers is by spectral signature,” i.e., the
limitation not taught by the other references. See id. at 12-13. That is, TRW
did not present this evidence as supporting the alleged reasons to combine
AURORA with the above references. Further, the Rehearing Request does
not explain how this evidence supports the reasons to combine presented in
the Petition, other than to say that Kenue’s detection of lane markers “may
be enhanced” by AURORA’s “color camera and color processing.” In sum,
TRW has not persuaded us that we abused our discretion in determining not
to institute an inter partes review of claim 35.
IV. ORDER
For the foregoing reasons, it is
ORDERED that TRW’s Request for Rehearing is granted to the
extent that we reconsider our determination not to institute an inter partes
review as to claims 31 and 37 of the ’462 patent;
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FURTHER ORDERED that the Decision (Paper 17) is modified to
institute (in addition to the grounds specified in the Decision) an inter partes
review as to claims 31 and 37 of the ’462 patent on the following ground of
unpatentability:
Claims 31 and 37, unpatentable under 37 U.S.C. § 102(b) as
anticipated by Kenue; and
FURTHER ORDERED that TRW’s Request for Rehearing is denied
in all other respects.

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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