TRW Automotive U.S. LLCv.Magna Electronics Inc.Download PDFPatent Trial and Appeal BoardFeb 20, 201512132373 (P.T.A.B. Feb. 20, 2015) Copy Citation Trials@uspto.gov Paper 7 571-272-7822 Date: February 20, 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 IPR2014-01346 Patent 8,179,437 B2 ____________ Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and BARRY L. GROSSMAN, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2014-01346 Patent 8,179,437 B2 2 I. BACKGROUND Petitioner TRW Automotive U.S. LLC (“TRW”) filed a Petition (Paper 1, “Pet.”) seeking inter partes review of claims 1–13 of U.S. Patent No. 8,179,437 B2 (Ex. 1002, “the ’437 patent”). Patent Owner Magna Electronics Inc. (“Magna”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that 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). For the reasons that follow, and based on the evidentiary record developed so far, that TRW has not established a reasonable likelihood that it will prevail with respect to at least one challenged claim. Accordingly, the Petition is denied under 35 U.S.C. § 314(a) for the reasons that follow. A. Related Proceedings The parties inform us that the ’437 patent is the subject of a co- pending district court case titled Magna Electronics Inc. v. TRW Automotive Holdings Corp., Case 1:13-cv-00324 (W.D. Mich.). Pet. 2–3; Paper 5, 3. B. The ’437 Patent (Ex. 1002) The ’437 patent discloses a vehicle accessory module 10 used in windshield electronic modules and interior rearview mirror assemblies. Ex. 1002, 1:24–27. Module 10 mounts to mounting attachment 18, such as a conventional mounting button, at windshield 12. Id. at 9:9–12. Mounting button 18 is bonded or secured to interior surface 12a of windshield 12. Id. at 9:13–14, Fig. 2. Extender 16 mounts to and extends from mounting attachment 18. Id. at 9:10–11. Body 10a of accessory module 10 includes structural member 26 and cover 28, which define cavity 30 in accessory IPR2014-01346 Patent 8,179,437 B2 3 module 10 for mounting accessories in accessory module 10. Id. at 10:48– 51. Structural member 26 includes mounting portion 34 and plate portion 32. Id. at 10:51–53. Mounting portion 34 forms opening 34a for receiving extender 16. Id. at 10:53–55. Mounting portion 34 and extender 16 include cooperating teeth or projections 34b that engage one another as structural member 26 is pressed along extender 16 toward and against windshield 12 to retain accessory module 10 tightly or snugly against interior surface 12a of windshield 12. Id. at 10:55–67. Accessory module 10 may include sealing or cushioning member or strip 27 to cushion and/or seal body 10 at interior surface 12a of windshield 12, as illustrated in Figures 7 and 8, reproduced below. Id. at 11:41–45. Fig. 7 shows accessory module 10 being moved along extension 16. Fig. 8 shows accessory module 10 mounted to extension and loaded against window 12. Id. at 5:50–55. IPR2014-01346 Patent 8,179,437 B2 4 C. Illustrative Claim Claim 1 is the sole independent claim. Claims 2–13 depend directly or indirectly from claim 1. Claim 1 is reproduced below: 1. An accessory module system for a vehicle, said accessory module system comprising: an interior rearview mirror assembly; an accessory module; at least one accessory housed at least partially in said accessory module, said at least one accessory comprising a camera, said camera having a lens; an attachment member adhesively attached at an interior surface of a vehicle windshield; said accessory module being configured to mount to said attachment member; said accessory module comprising a windshield facing portion that opposes the interior surface of the vehicle windshield when said accessory module is mounted to said attachment member adhesively attached at the interior surface of the vehicle windshield; said camera being disposed in said accessory module, said accessory module comprising structure to angle said camera with respect to said windshield facing portion of said accessory module, said camera having a forward field of view through the vehicle windshield when said accessory module is mounted to said attachment member; wherein said lens of said camera is spaced from the interior surface of the vehicle windshield when said accessory module is mounted to said attachment member adhesively attached at the interior surface of the vehicle windshield; wherein said camera is angled by said structure of said accessory module and with respect to said windshield facing portion to at least partially compensate for the angle of the windshield itself, and wherein a principal axis of the forward field of view of said camera is directed generally at or below horizontal when said accessory module is mounted to said attachment member; IPR2014-01346 Patent 8,179,437 B2 5 wherein said windshield facing portion of said accessory module comprises a resilient element disposed at the interior surface of the vehicle windshield to at least one of cushion and seal said accessory module relative to the interior surface of the vehicle windshield when said accessory module is mounted to said attachment member adhesively attached at the interior surface of the vehicle windshield; wherein said accessory module is detachably mounted to said attachment member adhesively attached at the interior surface of the vehicle windshield; and wherein said interior rearview mirror assembly detachably mounts to at least one (a) said accessory module, (b) a second attachment member at the interior surface of the vehicle windshield, and (c) a header portion of the vehicle. D. The Prior Art TRW relies on the following references: Reference Patent/Printed Publication Date Exhibit Campbell WO 99/43242 Sept. 2, 1999 1004 Rayner I-Witness Black Box Recorder, Intelligent Transportation Systems Program 1005 Ponziana U.S. Patent No. 6,066,933 May 23, 2000 1006 E. The Asserted Ground of Unpatentability TRW challenges the patentability of claims 1–13 of the ’437 patent on the following ground: References Basis Claims Challenged Campbell, Rayner, Ponziana § 103 1–13 IPR2014-01346 Patent 8,179,437 B2 6 II. ANALYSIS A. Real Parties-In-Interest In accordance with 37 C.F.R. § 42.8(b)(1), Petitioner identified “TRW Automotive U.S. LLC of Farmington Hills, Michigan” as the sole real party- in-interest.” Pet. 2. Magna asserts that because “TRW has made statements that call into question the true identities” of the real parties-in-interest, the requirements of 35 U.S.C. § 312(a)(2) have not been met.” Prelim. Resp. 1. Magna also contends that TRW “muddies the issue” by identifying “TRW Automotive Holdings Corp.” and “TRW Vehicle Safety Systems Inc.” as co-defendants in related litigation. Id. at 4. Magna asserts that TRW Automotive Holdings Corp. is the ultimate parent corporation of Petitioner TRW Automotive US LLC and “undoubtedly exhibits a significant measure of control over TRW Automotive U.S. LLC.” Id. at 4–5. According to Magna, the fact that the Annual Report of TRW’s parent corporation discusses TRW’s financial position and operating results “suggests a tight financial integration” between the two companies. Id. at 5–6. Magna does not clarify, however, whether it is arguing that TRW Automotive Holdings Corp. and TRW Vehicle Safety Systems Inc. are real parties-in-interest, or whether it is arguing that only TRW’s parent company, TRW Automotive Holdings Corp., is a real party-in-interest. We address the merits of Magna’s assertions for both companies. A petition for inter partes review (“IPR”) may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party- IPR2014-01346 Patent 8,179,437 B2 7 in-interest. 77 Fed. Reg. 48,756, 48,759–48,760 (Aug. 14, 2012) (Trial Practice Guide). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. A party does not become a “real party-in-interest” merely through association with another party in an unrelated endeavor. Id. A party also is not considered a real party-in-interest in an IPR solely because it is a co-defendant with a petitioner in a patent infringement suit or is part of a joint defense group with a petitioner in the suit. Id. Whether a party who is not a named participant in a given proceeding is a “real party-in-interest” to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term “real party in interest” to describe relationships and considerations that justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner from a practical standpoint. Zoll Lifecor Corp. v. Philips Elec. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We look to the evidence on which Magna relies to determine the fact dependent issue of whether TRW Automotive Holdings Corp. and TRW Vehicle Safety Systems Inc. are real parties-in-interest in this proceeding. Magna speculates about what the evidence “undoubtedly exhibits” or “suggests” concerning the relationship of TRW to its parent corporation, IPR2014-01346 Patent 8,179,437 B2 8 TRW Automotive Holdings Corp. Prelim. Resp. 4–6. This speculation is based on general evidence of a parent/subsidiary relationship in a required Annual Report (Form 10-K) submitted to the U.S. Securities and Exchange Commission (Ex. 2002). The statement in this Annual Report s that TRW Automotive Holdings Corp. “conduct[s] substantially all of [its] operations through subsidiaries” (Ex. 2002, 5) is not persuasive or sufficient evidence to establish “an involved and controlling parent corporation representing the unified interests of itself and Petitioner,” as found in Zoll. IPR2013-00609, Paper 15, slip op. at 12. In RPX Corp. v. Virnetx, Inc., Case IPR2014-00171, slip op. at 6–10 (PTAB June 23, 2014) (Paper 49), the Board discussed a number of factors to determine whether the petitioner RPX was a proxy for a non-party. Those factors include whether the petitioner is compensated by the non-party for filing the petition; whether the petitioner was authorized, explicitly or implicitly, by the non-party to file the petition or to represent the non-party in the IPR; and whether the petitioner is a “nominal plaintiff” with “no substantial interest” in the IPR challenge. Id. at 7–10. Unlike the facts in RPX, based on the record before us, there is no persuasive evidence that TRW is acting as a proxy for TRW Automotive Holdings Corp. Magna has not directed us to any evidence establishing a real party-in- interest relationship between TRW and TRW Vehicle Safety Systems Inc., other than TRW’s identification of TRW Vehicle Safety Systems Inc. as “related” and a co-defendant in a pending lawsuit. In Denso Corp. v. Beacon Navigation GmbH, Case IPR2013-00026, slip op. at 10–11 (PTAB March 14, 2014) (Paper 34), the Board determined that the mere fact that parties are co-defendants or concurrent defendants in litigation does not IPR2014-01346 Patent 8,179,437 B2 9 make them real parties-in-interest. In Denso, as here, there was no persuasive evidence that the non-party engaged in strategic planning, preparation, and review of the inter partes review petition. Magna’s speculation suggesting that TRW Vehicle Safety Systems Inc. is a real party- in-interest in this proceeding has no persuasive evidentiary support. TRW’s identification of the two other TRW entities as “related to Petitioner” (Pet. 3) does not contradict TRW’s identification of the sole real party-in-interest in this proceeding. Magna’s speculation about the motives of TRW, i.e., that TRW “appears to be attempting to evade the estoppel effect” (Prelim. Resp. 6), also is unpersuasive. Accordingly, based on the evidence before us, Magna fails to establish that either TRW Automotive Holdings Corp. or TRW Vehicle Safety Systems Inc. is a real party-in-interest in this proceeding. B. Claim Interpretation In an inter partes review, claims of an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also Trial Practice Guide, 77 Fed. Reg. at 48,766. 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). 1. “resilient element disposed at the interior surface of the vehicle windshield” (claim 1) TRW does not propose a construction for this limitation, but appears to treat this limitation as requiring that a resilient element may be on or near the interior surface of the windshield. Pet. 24. Magna asserts that “TRW IPR2014-01346 Patent 8,179,437 B2 10 improperly interprets the phrase ‘at the interior surface of the vehicle windshield’ (emphasis added) to mean on or near the interior surface of the vehicle windshield.” Prelim. Resp. 20. Magna asserts that this limitation should be construed in light of the ’437 patent specification to mean “that at least one resilient element is at least partially in contact with or at least partially engages the interior surface of the windshield.” Id. at 22. We interpret the limitation “a resilient element disposed at the interior surface of the vehicle windshield” to mean “a resilient element located on and in contact with the interior surface of the vehicle windshield when the accessory module is mounted to said attachment member.” This definition is consistent with the’437 patent specification, which discloses accessory module 10 with sealing or cushioning member or strip 27 around plate 32 to cushion and/or seal body 10 of accessory module 10 at interior surface 12a of windshield 12 when accessory module 10 is mounted to attachment 18. Ex. 1002, 10:51–67; Fig. 8. Figure 8 illustrates resilient seal/cushion 27 contacting interior surface 12a of windshield 12 when accessory module 10 is mounted to attachment 18. Id. at 5:50–55, Fig. 8. Figure 7 shows resilient seal/cushion not contacting interior surface 12a of windshield 12 when accessory module 10 is not mounted to attachment 18. See id. C. Asserted Ground of Unpatentability 1. Obviousness of Claims 1–13 Over Campbell, Rayner, and Ponziana a. Overview of Campbell (Ex. 1004) Campbell discloses an optical assembly including bracket 1 and optical device 2. Ex. 1004, 5:15–16, Fig. 2. Optical device 2 contains optical components for an optical monitoring system such as a lane IPR2014-01346 Patent 8,179,437 B2 11 departure warning system. Id. at 4:29–31. Opening 35 is located on front surface 39 of optical device 2 with lens element 45 located within or behind opening 35 and imager 44 within optical device 2 to detect lane markers on the roadway. Id. at 7:12–18, Fig. 5. Bracket 1 is attached to windshield 31 by adhesive 41, which creates a tight seal between windshield 31 and front surface 14 of bracket 1. Id. at 5:18–21. Attachment of front surface 14 of bracket 1 by glue or adhesive tape provides a seal that surrounds opening 12 of bracket 1. Id. at 6:13–15. A separate seal, such as an annular gasket, may be used to affix bracket 1 to windshield 30. Id. at 6:15–17. Annular seal 41 on back surface 18 of bracket 1 encircles circular opening 12 to create a seal between back surface 18 and optical device 2 and prevent fogging of lens element 35. Id. at 6:17–21. Optical device 2 is removably mounted to bracket 1, as shown in Figure 6, which is reproduced below. Id. at 5:1–4, 7:22–8:4. Figure 6 illustrates the assembly of optical assembly. IPR2014-01346 Patent 8,179,437 B2 12 Extension 36 inserts into opening 13 and notches 37 lock into groove members 19 to mount optical device 2 to bracket 1. Id. at 7:22–27. When mounted, front surface 39 of optical device 2 is seated against back surface 18 of bracket 1 and annular seal 41 on bracket 1 creates a seal around lens element in opening 35 of optical device 2. Id. at 7:27–8:4, Figs. 2, 6. b. Overview of Rayner (Ex. 1005) Rayner discloses a DriveCam that mounts behind the rearview mirror and records video, audio, and acceleration/deceleration forces of a vehicle during operation. Ex. 1005, 5, 17. The DriveCam camera mounts to a bracket that is affixed to the windshield with the camera lens pointed horizontally or slightly down (< 10 degrees). Id. at 17. c. Overview of Ponziana (Ex. 1006) Ponziana discloses a rain sensor that mounts on a rearview mirror mount situated at the windshield and also includes a mounting area for mounting a mirror thereon. Ex. 1006, 1:8–14. d. Analysis TRW contends that claims 1–13 are unpatentable under 35 U.S.C. § 103(a) over Campbell, Rayner, and Ponziana. For reasons that follow, TRW has not demonstrated a reasonable likelihood of prevailing with respect to its challenge of any of claims 1–13. TRW asserts that Campbell discloses all of the limitations of claim 1, except for a detachable rearview mirror mounted to windshield 31. Pet. 27. TRW asserts that Campbell discloses an accessory module (optical device 2), which may be a digital camera and includes lens element 45. Id. at 16– 17. TRW further asserts that Campbell discloses an attachment member (mounting bracket 1) that is attached to windshield 31 by adhesive 41. Id. at IPR2014-01346 Patent 8,179,437 B2 13 17. TRW also asserts that “[o]ptical device 2 [accessory module] is shown in the operating position as inserted in bracket 1 [attachment member]” such that Campbell discloses “said accessory module being configured to mount to said attachment member.” Id. TRW contends that Figure 6 of Campbell shows optical device 2 being mounted to bracket 1. Id. at 17–18. TRW contends that front surface 39 of optical device 2 opposes the interior surface of windshield 31 when device 2 is mounted to bracket 1. Id. at 18. TRW asserts that optical device 2 has structure that angles camera to compensate for the angle of windshield 31 when optical device 2 is mounted to bracket 1 and set a principal axis of lens element 45 generally at or below horizontal. Id. at 18–23. TRW asserts that Campbell discloses a resilient element (annular seal 41), which is located on back surface 18 of bracket 1, encircles circular opening 12 of bracket 1, and creates a seal between back surface 18 of bracket 1 and optical device 2. Id. at 23–24. TRW notes that claim 5 of Campbell recites a sealing device “located around said opening in the bracket for creating a seal between said lens element and said vehicle windshield.” Id. at 24. TRW contends that these features disclose the following limitations of claim 1: wherein said windshield facing portion of said accessory module comprises a resilient element disposed at the interior surface of the vehicle windshield to at least one of cushion and seal said accessory module relative to the interior surface of the vehicle windshield when said accessory module is mounted to said attachment member adhesively attached at the interior surface of the vehicle windshield[.] Id. at 23–24. TRW contends that Campbell discloses the accessory module is detachably mounted to the attachment member that is adhesively attached IPR2014-01346 Patent 8,179,437 B2 14 at the interior surface of the vehicle windshield because optical device 2 is removed easily from bracket 1 for repair or replacement. Id. at 24. Magna argues that Campbell does not disclose a resilient element. In particular, Magna argues that “the limitation ‘a resilient element disposed at the interior surface of the vehicle windshield’ means that that resilient element in claim 1 is in contact with the interior surface of the windshield when the accessory module is mounted to the attachment member that is adhesively attached at the interior surface of the vehicle windshield.” Prelim. Resp. 29. Magna also argues that annular seal 41 on rear surface or backside 18 of bracket 1 “does not contact or engage (and cannot contact or engage) the interior surface of windshield 31 in any way.” Id. Thus, “the annular seal 41 in Campbell cannot be equivalent to the resilient element disposed at the interior surface of the windshield recited in claim 1.” Id. Magna notes that Campbell discloses a separate seal that affixes bracket 1 to the interior surface of windshield 31. Id. at 29–30. Magna argues that this seal may be at the interior surface of windshield 31, as claimed, but it is not located at optical device 2 that mounts to attachment member 1. Id. at 30. Magna’s arguments are persuasive. TRW has not provided sufficient evidence or argument to establish that optical device 2, which TRW equates to the claimed accessory module (Pet. 16–24) “comprises a resilient element disposed at the interior surface of the vehicle windshield” as recited in claim 1. TRW asserts that Campbell teaches that “an annular seal is shown located on back surface 18 of bracket 1” and “is employed to create a seal between back surface 18 and optical device 2.” Pet. 23–24. TRW has not explained how this disclosure establishes that a windshield-facing portion of optical device 2 comprises a resilient element such as inner seal 41. IPR2014-01346 Patent 8,179,437 B2 15 Even if annular seal 41 of bracket 1 were considered part of optical device 2 when optical device is mounted to bracket 1 (see Ex. 1004, Fig. 2), TRW has not established that annular seal 41 is “disposed at the interior surface of the vehicle windshield to at last one of cushion and seal said accessory module relative to the interior surface of the vehicle windshield when said accessory module is mounted to said attachment member . . . .” TRW contends that Figure 6 of Campbell “shows seal 41 disposed at (i.e., on or near) the interior surface of the vehicle windshield 31.” Pet. 24. However, TRW notes Campbell’s teaching that annular seal 41 is “employed to create a seal between back surface 18 [of bracket 1] and optical device 2.” Id. (citing Ex. 1004, 617–20). Campbell discloses annular seal 41 as being located on back surface 18 of bracket 1. 1 Ex. 1004, 6:17–19. Back surface 18 of bracket 1 faces away from and does not contact the interior surface of windshield 31. Id. at Fig. 6. In view of our interpretation of the limitation “a resilient element disposed at the interior surface of the vehicle windshield” to mean “a resilient element located on and in contact with the interior surface of the vehicle windshield,” TRW’s contention that annular seal 41 meets this limitation because it is “near” the interior surface of the vehicle windshield is not persuasive. Nor has TRW established that inner seal 41 cushions and seals optical device 2 “relative to the interior surface of the vehicle windshield” when optical device 2 is mounted to bracket 1. 1 Figure 3 illustrates front surface 14 of bracket 1 and annular seal 41 is shown in dashed lines, which generally indicate hidden lines, or a feature that is not visible. Manual of Patent Examining Procedure § 608.02 IX. Drawing Symbols (8th ed., rev.9, Aug. 2012). IPR2014-01346 Patent 8,179,437 B2 16 Campbell discloses that a separate seal, such as an annular gasket, may be used to affix front surface 14 of bracket 1 to the interior surface of windshield 31. Id. at 6:11–16, Figs. 2, 3, 6. This seal, which is not shown in any of Campbell’s drawings, may be “at the interior surface of the vehicle windshield,” but it is affixed to front surface 14 of bracket 1. TRW has not established that the asserted “accessory module” (i.e., Campbell’s optical device 2) comprises this seal. TRW notes that this seal “may itself be means of attaching the bracket 1 to the windshield 31 . . . between the bracket and the windshield separate from the attachment means (1004-008 at 6:15-16) and also on the optical device 2. (1004-008 at 6:17-19).” Pet. 24. The portions of Campbell cited by TRW do not disclose a seal as part of optical device 2. Campbell discloses only that an annular gasket “could also affix the bracket to the windshield” and “annular seal 41 is located on back surface 18 of bracket 1 . . . .” Ex. 1004, 6:17–19. Accordingly, TRW has not demonstrated that a reasonable likelihood exists that it would prevail in establishing the unpatentability of claim 1. TRW’s contentions regarding claims 2–13, which depend from claim 1, do not overcome the deficiencies discussed supra with respect to claim 1. III. CONCLUSION For the foregoing reasons, TRW has not demonstrated that a reasonable likelihood exists that it would prevail in establishing the unpatentability of any of claims 1–13 of the ’437 patent. IV. ORDER Accordingly, for the reasons given, it is ORDERED that the Petition is denied, and no trial is instituted. IPR2014-01346 Patent 8,179,437 B2 17 For PETITIONER: A. Justin Poplin Josh C. Snider Timothy Sendek Allan Sternstein LATHROP & GAGE, LLP JPoplin@LathropGage.com JSnider@LathropGage.com tsendek@lathropgage.com asternstein@lathropgage.com For PATENT OWNER: Timothy Flory Terence Linn Gardner, Linn, Burkhart & Flory, LLP Flory@glbf.com linn@glbf.com David Cornwell Richard Coller Sterne, Kessler, Goldstein & Fox PLLC davidc-PTAB@skgf.com rcoller-PTAB@skgf.com Copy with citationCopy as parenthetical citation