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

Patent Trial and Appeal Board

Dec 7, 2015

11716834 (P.T.A.B. Dec. 7, 2015)

Trials@uspto.gov Paper 30
Tel: 571-272-7822 Entered: December 07, 2015

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 IPR2014-01010
Patent 7,533,998 B2
_______________

Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
TRW Automotive US LLC (“Petitioner”) filed a Petition requesting an inter
partes review of claims 6–8 and 10 of U.S. Patent No. 7,533,998 B2 (“the ’998
patent”). Paper 2 (“Pet.”). We instituted an inter partes review of claims 6 and 10
on the ground of obviousness under 35 U.S.C. § 103(a) based on Ponziana1 and
Rayner,2 and on claim 7 on the ground of obviousness under 35 U.S.C. § 103(a)3
based on Ponziana, Rayner, and Kakinami.4 Paper 8 (“Dec. on Inst.”). We did not
institute a trial on claim 8 (id.) and denied Petitioner’s request for rehearing of our
decision regarding claim 8 (Paper 13). Magna Electronics Inc. (“Patent Owner”)
filed a Patent Owner Response. Paper 15 (“PO Resp.”). Petitioner filed a Reply.
Paper 20 (“Reply”).
An oral hearing was held on September 23, 2015. A transcript of the
hearing is included in the record. Paper 29 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine Petitioner has shown, by a
preponderance of the evidence, that claims 6, 7, and 10 are unpatentable.
A. Related Proceedings
Petitioner and Patent Owner state that the ’998 patent is involved in a
pending district court case, titled Magna Electronics Inc. v. TRW Automotive
Holdings Corp., No. 1:13-cv-00324 (W.D. Mich.). Pet. 2; Paper 5, 2.

1 Ex. 1004, U.S. Pat. No. 6,066,933, issued May 23, 2000.
2 Ex. 1005, U.S. Pat. No. 6,389,340 B1, issued May 14, 2002.
3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat.
284, 296–07 (2011), took effect on September 16, 2012. Because the application
for the patent at issue in this proceeding has an effective filing date before that
date, we refer to the pre-AIA versions of § 103.
4 Ex. 1006, U.S. Pat. No. 5,096,287, issued March 17, 1992.
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B. The ’998 Patent
The ’998 patent discloses a vehicle accessory module that mounts to the
interior surface of the vehicle’s windshield. Ex. 1002, col. 2, ll. 6–8. The module
may contain various accessories, such as a rain sensor, temperature sensor, or
image sensor. Id. at col. 2, ll. 6–12; see also col. 12, ll. 33–67 (disclosing an
extensive list of “accessories” that may be housed in the module). The challenged
claims relate to the structure of the module to angle a camera within the module
and the mounting structure for attaching the module to the windshield. The
challenged claims do not include limitations directed to the electronic circuitry or
operation of a specific accessory.
The patent includes sixty-eight figures, many of which have subparts; fifty-
one columns of written description text; and more than fifteen different
embodiments. Ex. 1002. Figure 9 from the ’998 patent, reproduced below, shows
the basic components in one embodiment of the disclosed accessory module. The
accessory module system in the ’998 patent attaches to the interior of a vehicle’s
windshield. Ex. 1002, col. 2, ll. 6–15. The system includes, in general overview, a
rearview mirror and an accessory module, for housing, among other things, a
camera, which records images through the windshield. Id.
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FIG. 9 from the ’998 patent is a sectional view showing accessory 42
mounted within module 10, which is mounted to windshield 12.
As shown in Figure 9, accessory module 10 includes mounting device 44 for
accessory 42, such as a camera, optical rain sensor, or other accessory device.
Ex. 1002, col. 12, ll. 33–66. Mounting device 44 is adjustable to orient accessory
42 to a desired angle, regardless of the angle of the windshield to which accessory
module 10 is attached. Id. at col. 13, ll. 1–5.5 Mounting device 44 also may
include outer sealing member 44b, which engages and seals against interior surface
12a of windshield 12 to provide sealed chamber 44c in which accessory 42 is
positioned. Id. at col. 13, ll. 20–23.
C. Illustrative Claim
Among the challenged claims, claim 6, reproduced below, is the sole
independent claim and is illustrative of the claimed invention:

5 As discussed in the following sections, the challenged claims require structure to
angle the camera with respect to the windshield facing portion of the accessory
module but do not recite an adjustable accessory mounting device.
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6. An accessory module system for a vehicle, said accessory
module system comprising:
an interior rearview mirror assembly. said interior rearview
mirror assembly comprising an interior rearview mirror assembly
mounting portion;
an accessory module separate from said interior rearview
mirror assembly, said accessory module comprising an accessory
module mounting portion;
at least one accessory housed at least partially by said
accessory module, said at least one accessory comprising a
camera, said camera having a lens;
wherein said camera is associated with at least one of (i) a
rain sensing system, (ii) a headlamp control system, (iii) a lane
departure detection or warning system, (iv) an adaptive cruise
control system, (v) a sign recognition system, (vi) a night vision
system, (vii) a pedestrian detection system, (viii) a vehicle
classification identification system, (ix) a vehicle compatibility
detection system, (x) a pre-crash avoidance system, (xi) an
emergency response image capture system, (xii) an
environmental detection system, (xiii) an ambient light level
detection system, (xiv) a vehicle relative position detection
system, (xv) a compass calibration system, (xvi) a global
positioning system, and (xvii) an electronic toll collection
system;
a first attachment member at an interior surface of a vehicle
windshield of a vehicle;
said accessory module mounting portion being configured to
detachably mount to said first attachment member;
said accessory module comprising a windshield facing
portion that opposes the interior surface of the vehicle
windshield when said accessory module mounting portion is
mounted to said first attachment member at the interior surface
of the vehicle windshield, wherein said windshield facing portion
is disposed generally at the vehicle windshield when said
accessory module mounting portion is mounted to said first
attachment member;
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
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module, 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,
said camera having a forward field of view through said
windshield facing portion and through the vehicle windshield
when said accessory module mounting portion is mounted to said
first attachment member;
wherein said lens of said camera is spaced from the interior
surface of the vehicle windshield when said accessory module
mounting portion is mounted to said first attachment member at
the interior surface of the vehicle windshield; and
wherein said interior rearview mirror assembly detachably
mounts to at least one (a) a second attachment member at a
portion of said accessory module that generally opposes said
windshield facing portion, (b) a second attachment member at
the interior surface of the vehicle windshield and spaced from
said first attachment member, and (c) a header portion of the
vehicle remote from said first attachment member.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable construction in light of the specification of
the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs.
LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015) (“Congress implicitly approved the
broadest reasonable interpretation standard in enacting the AIA,” and “the standard
was properly adopted by PTO regulation”). Also, 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). The language used in the specification is the
preferred source for defining the meaning of claim terms. Phillips v. AWH Corp.,
415 F.3d 1303, 1315 (2005) (en banc) (“the specification ‘. . . is the single best
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guide to the meaning of a disputed [claim] term’”) (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
1. Fastenerless
Petitioner proposes a specific construction for the term “fastenerless,” which
is a term in dependent claim 10. Claim 10 requires the accessory module to be
detachably mounted to the first attachment member at the interior surface of the
windshield “via a fastenerless attachment.” Ex. 1002, col. 54, ll. 40–43.
Petitioner proposes that the term “fastenerless” should be construed as
applying to any “detachable mount other than a screw.” Pet. 5. Petitioner asserts
that this proposed construction is reasonable because the ’998 patent “provides no
explanation, other than the passing confusing reference to Blank,6 nor any
drawings to otherwise distinguish ‘fastenerless’ from any detachable attachment
means other than a screw.” Id.
Patent Owner does not suggest a specific interpretation for the term
“fastenerless.”
Under the “broadest reasonable construction” standard, we look to the
Specification for interpretive guidance. 37 C.F.R. § 42.100(b) (“[a] claim in an
unexpired patent shall be given its broadest reasonable construction in light of the
specification of the patent in which it appears”). The Specification of the ’998
patent is of little help in sorting out the meaning of the term “fastenerless.” The
Specification states that:
accessory module 10 may detachably attach. . . to button 1018
(such as using a fastenerless attachment element, such as a top
clip attachment, such as described in U.S. Pat. No. 5,576,687,7

6 “Blank” refers to Ex. 1007, U.S. Pat. No. 5,576,687, issued Nov. 19, 1996.
Pet. 5.
7 This patent is Exhibit 1007 in this proceeding.
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which is hereby incorporated herein by reference) or may be
secured thereto using a screw or similar fastener.
Ex. 1002, col. 23, ll. 2–8.
U.S. Patent No. 5,576,687 (“the ’687 patent” or “Blank”) does not use the
term “top clip,” “top clip attachment,” or “fastenerless.” The ’687 patent refers,
however, to a “resilient S-shaped spring clip 400 shown in FIG. 15.” Ex. 1007,
col. 10, l. 7. Figure 15 from the ’687 patent is reproduced below.

Figure 15 from the ’687 patent illustrates attachment member
400 for coupling an information display to a windshield-mounted
channel mount for an interior rear view mirror.
The Specification of the ’687 patent states that spring clip 400 “may be any
one of a number of mechanical fasteners including permanent or releasable
fasteners, such as screws, rivets, VELCROTM fastening material, and the like.” Id.
at col. 10, ll. 14–17.
The Specification of the ’998 patent uses the term “fastener” numerous
times. See, e.g., Ex. 1002, col. 11, l. 17 (“threaded fastener”), col. 14, l. 24 (“screw
or fasteners”), col. 20, l. 44 (“screws, snaps, or other fasteners”). Thus, we have
numerous examples of what a “fastener” is; however, we have only one example of
a “fastenerless attachment,” as required by claim 10. The one example is a “top
clip attachment,” such as described in the ’687 patent. Ex. 1002, col. 23, ll. 2–8.
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The root word in question in claim 10 is the noun “fastener,” with the suffix
“less” added, to create thereby the word “fastenerless.” The plain and ordinary
meaning of the term “fastenerless” means “without a fastener.” Applying this
meaning to claim 10, a “fastenerless attachment” is something that detachably
mounts accessory module 10 to an attachment member without using a fastener.
Petitioner’s assertion that “fastenerless” means a “detachable mount other than a
screw” is not supported by the Specification or by a common dictionary definition.
We construe the term “fastenerless attachment” in claim 10 to mean an
attachment device that does not use a fastener to mount detachably the accessory
module. An example of a “fastenerless attachment” is spring clip 400 from the
’687 patent that does not have or use the optional hole or slot 412 in ends 408 and
410 in order to receive a fastener 413 for attaching the respective end to a surface.
Ex. 1007, col. 10, ll. 12–19.
B. Asserted Grounds of Unpatentability
1. Obviousness Based on Ponziana and Rayner
Petitioner asserts that claims 6 and 10 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Ponziana in view of Rayner. Pet. 11. Patent Owner
asserts that the evidence on which Petitioner relies does not disclose or suggest
“two critical and distinct features” recited in claim 6, which are: (1) the accessory
module must have structure to angle the camera with respect to the windshield-
facing portion of the accessory module; and (2) the purpose or function of angling
the camera is to compensate for the angle of the windshield. E.g., Tr. 43, ll. 4–9.
a. General Legal Principles
Section 103(a) precludes issuance of a patent when “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
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person having ordinary skill in the art to which said subject matter pertains.”
35 U.S.C. § 103(a). In Graham v. John Deere Co. of Kansas City, 383 U.S. 1
(1966), the Court set out a framework for applying the statutory language of § 103:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined.
Id. at 17–18. “While the sequence of these questions might be reordered in any
particular case, the factors continue to define the inquiry that controls.” KSR Int’l.
v. Teleflex Inc., 550 U.S. 398, 407 (2007).
The Supreme Court made clear that we apply “an expansive and flexible
approach” to the question of obviousness. Id. at 415. Whether a patent claiming
the combination of prior art elements would have been obvious is determined by
whether the improvement is more than the predictable use of prior art elements
according to their established functions. Id. at 417. To reach this conclusion,
however, it is not enough to show merely that the prior art includes separate
references covering each separate limitation in a challenged claim. Unigene Labs.,
Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
additionally requires that a person of ordinary skill at the time of the invention
would have selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention. Id. “A reference must
be considered for everything it teaches by way of technology and is not limited to
the particular invention it is describing and attempting to protect.” EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985).
As a factfinder, we also must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
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KSR, 550 U.S. at 421. This does not deny us, however, “recourse to common
sense” or to that which the prior art teaches. Id.
Petitioner has the burden of proof to establish unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e).
Against this general background, we consider the references, other evidence,
and arguments on which the parties rely.
b. Scope and Content of the Prior Art
i. Ponziana
Ponziana discloses a rain sensing system. Ex. 1004, col. 1, ll. 8–14. The
general structure of the system is shown in Figure 3 from Ponziana, which is
reproduced below.

Figure 3 from Ponziana is a fragmentary sectional view showing
rain sensor 24 mounted on mirror mount 26
As shown in Figure 3, sensor 24 is mounted on first mounting structure 26,
which, in turn, is adhered to inner surface 15b of windshield 15 using suitable
adhesive 28. Ex. 1004, col. 3, ll. 9–13. While the Ponziana disclosure is directed
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to a rain sensor, Ponziana states that a “CCD camera”8 may be provided as sensor
24. Id. at col. 3, ll. 65–67.
Sensor 24 includes housing 30. Id. at col. 3, ll. 14–15. Inside the housing is
sensor circuit board 38, which includes a plurality of optical sensors 40. Id. at col.
3, ll. 24–26. Optical sensors 40 sense the presence or absence of debris on the
surface of windshield 15. Id. at col. 3, ll. 28–29, 40–41. As shown in Figure 3,
circuit board 38 is mounted directly within housing 30 using suitable screws or
fasteners 37.
In the preferred rain sensor embodiment, optical sensors 40 are situated a
predetermined distance from the windshield, the distance being a function of the
design (e.g., focal length) of sensor 40 and the area to be sensed. Id. at col. 3,
ll. 53–56. In the preferred rain sensor embodiment, optical sensors 40 generally
are parallel with windshield 15, regardless of the rake or slant angle associated
with the windshield. Id. at col. 3, ll. 51–53. Ponziana also discloses, however, that
optical sensors 40 may not be generally parallel to the windshield if an unusual
angle is required to sense a larger area. Id. at col. 3, ll. 56–60; Ex. 1008 ¶ 55.
Ponziana does not disclose any specific structure to configure sensors 40 so that
they are not generally parallel to the windshield, but clearly suggests this
configuration. Petitioner acknowledges that Ponziana does not disclose a structure
to angle the optical sensors to compensate for the angle of the windshield. Pet. 12.
In disclosing these alternative configurations for the relationship of the optical
sensors to the windshield (i.e., parallel or not parallel), however, Ponziana would

8 As explained in U.S. Patent No. 6,097,023 (Ex. 3001), incorporated by reference
into the ’998 patent (Ex. 1002, col. 12, ll. 41–42), a photosensing array may be a
charge couple device (CCD) array of the type commonly utilized in video
camcorders and the like. Ex. 3001, col. 8, ll. 40–42.
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have suggested to a person of ordinary skill that the angle of the windshield is a
consideration in positioning optical sensors 40.
Ponziana also discloses the accessory mounting structure, housing 30,9 for
mounting sensor 24 to first mounting structure 26 adhered to windshield 15.
Housing 30 includes first side 31 (see Figure 4) having angled wall 30a, which
defines first mounting area 32 for receiving a corresponding projection on
mounting structure 26. Id. at col. 3, ll. 17–20. As shown in Figure 3, and as
described in Ponziana, mounting area 32 and mounting structure 26 define a
generally complementary trapezoidal or dovetail shape, which connect sensor 24 to
windshield 15. Id. at col. 4, ll. 25–28.
ii. Rayner
Rayner discloses a vehicle accident data recorder. Ex. 1005, col. 1, ll. 29–
41. The data recorder is mounted in the vehicle cabin in a manner that “provides a
clear field-of-view for the image sensor.” Id. at col. 2, ll. 41–42. Rayner discloses
that the data recorder “can be mounted on the windshield or on the dashboard of
the vehicle, with the image sensor directed either forwardly toward action
occurring on the other side of the windshield or rearwardly toward action occurring
in the vehicle cabin.” Id. at col. 2, ll. 43–47.
In one embodiment, Rayner discloses that the data recorder “is mounted to
the windshield 14 of automobile 12 in the manner of a conventional rear-view
mirror.” Id. at col. 3, ll. 15–19. Rayner discloses that the fields-of-view of the

9 In some places, Ponziana uses reference numeral 30 to refer to both the housing
(see, e.g., Ex. 1004, col. 3, ll. 15, 17, 20) and a second mounting area (see, e.g., id.
at col. 4, ll. 15–16, 19, 21). Ponziana, however, initially refers to the second
mounting area with reference numeral 34 (see id. at col. 3, l. 22), which appears to
be the correct designation to avoid confusion with and redundancy with housing
30.
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data recorder “would preferably cover the entire area ahead of vehicle . . . and the
entire cabin area.” Id. at col. 3, ll. 54–55. Rayner’s data recorder may be
“integrated with a rear-view mirror.” Id. at col. 2, l. 51.
Rayner discloses that the data recorder is mounted “generally parallel to
windshield 14,” but “not precisely parallel, because windshield 14 has some
curvature, and because recorder device 10 is pivotally mounted to provide limited
two-axis adjustability, as in a conventional rear-view mirror.” Id. at col. 3, ll. 23–
27. Thus, Rayner recognizes the need to position the camera within the data
recorder based on the shape of the windshield, and the need for adjustability to
ensure that the camera senses the entire area ahead of vehicle.
Figure 2 in Rayner is an alternate embodiment, which is a self-contained
data recorder for a vehicle with suction cups for mounting to windshield. As
shown below in Figure 2, Rayner discloses data recorder 84 wherein all of the
electronics and associated elements are contained within enclosure 86. Ex. 1005,
col. 7, ll. 2–4.

Figure 2 from Rayner shows vehicle data recorder 84 with
suction-cup mounts for mounting to an automobile windshield.
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As illustrated and described in Rayner, data recorder 84 is mounted to
windshield 14 (see Figure 1) using elastomeric suction cups 88 and 90. Id. at col.
7, ll. 6–8. Rayner also discloses that data recorder 84 can be mounted to the
windshield using “VELCRO-type hook and pile fasteners,” “a suitable adhesive”
or “double-sided adhesive tape.” Ex. 1005, col. 7, ll. 8–10. Cameras 22 and 24
(see Figure 3) have fields-of-view, indicated generally by the dashed lines, that
extend forwardly and rearwardly of a vehicle when attached to windshield 14. Id.
at col. 7, ll. 11–13. Rayner states, however, that the dashed lines are for purposes
of illustration only and are not intended to accurately depict the true fields-of-view,
which, as stated above, preferably covers the entire area ahead of vehicle 12 and
the entire cabin area. As shown in Figure 2, suction cups 88 and 90 appear to be
connected to enclosure 86 by a hinge (unnumbered) that appears to allow enclosure
86 to pivot, or at least to be angled, with respect to windshield 14 and thus to allow
forward facing camera 22 to be angled. Rayner, however, does not disclose the
details of the connection between enclosure 86 and suction cups 88 and 90.
c. Level of Ordinary Skill
Relying on the testimony of its Declarant, Homayoon Kazerooni, Ph.D.,
Petitioner asserts that a person of ordinary skill in the technology disclosed and
claimed in the ’998 patent at the time of the invention “would have had at least the
qualifications of or equivalent to either a 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. 13–14 (citing Ex. 1008 ¶ 42). Dr. Kazerooni also testified,
however, that a person of ordinary skill would “have had at least the qualifications
of or equivalent to an undergraduate degree in mechanical engineering with at least
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two years of work adapting computer vision systems for mounting in
automobiles.” Ex. 1008 ¶ 10.
Patent Owner asserts, without citation of any supporting evidence, that a
person of ordinary skill would have had “at least a Bachelor’s degree in electrical,
electronic, or mechanical engineering, and two years of experience in the relevant
field, such as in the integration of electronics into consumer products.”
PO Resp. 1 n.1. Although not cited by Patent Owner, Patent Owner’s Declarant,
Michael Nranian, testified in support of Patent Owner’s asserted level of ordinary
skill. Ex. 2006 ¶ 32.
We determine that the patentability of the challenged claims does not depend
on whether Petitioner’s or Patent Owner’s asserted definition is used. The
differences among the asserted positions are insignificant in resolving the issue of
the patentability of the challenged claims. Moreover, the prior art itself reflects an
appropriate level of skill and a need for testimony is not shown. Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
d. Independent Claim 6
Independent claim 6 requires an accessory module separate from an interior
rear view mirror assembly. Ex. 1002, col. 53, ll. 10–11. The accessory module is
mounted detachably to an attachment member on an inside surface of a vehicle’s
windshield. A camera is positioned within the accessory module. The accessory
module includes “structure to angle [the] camera with respect to [the] windshield
facing portion of [the] accessory module.” Ex. 1002, col. 53, ll. 43–45. As recited
in claim 6, the purpose or function of angling the camera with respect to the
windshield is “to at least partially compensate for the angle of the windshield
itself.” Id. at col. 54, ll. 2–3.
It is also important to focus on what claim 6 does not recite. Claim 6 does
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not recite any specific angle or range of angles between the camera and
windshield. Claim 6 does not recite any specific angle or range of angles for the
windshield. Patent Owner concedes that claim 6 is not limited to a windshield of
any particular angle. Tr. 51, ll. 1–4 Claim 6 does not recite any specific field of
view of the camera; only that the camera has “a forward field of view” through the
windshield facing portion of the module. Ex. 1002, col. 54, ll. 3–7.
According to Petitioner,
the only difference between Ponziana and claim 6 is that
Ponziana does not expressly define a structure to angle its
suggested equivalent CCD camera to compensate for the
windshield angle. Ponziana otherwise discloses all of the
limitations of claim 6, and clearly suggests that windshield angle
is a design consideration for a person of ordinary skill in the art.
Pet. 27 (citing Ex. 1008 ¶ 66).
Petitioner asserts that Rayner discloses an accessory module that includes a
structure to angle the camera relative to the windshield, and proposes that it would
have been obvious to modify Ponziana to use the adjustable module of Rayner.
Id.. 27–28; see also Reply 2 (“Rayner not only actually discloses this limitation but
it is certainly ‘capable of’ angling the camera with respect to the windshield facing
portion.”) The rationale for the proposed combination is that an angled camera
would provide “a larger forward field of view,” and it would allow adjustment to
compensate for the windshield angle, thus making the windshield angle irrelevant
to the camera view. Id. at 28 (citing Ex. 1008 ¶ 67).
Patent Owner asserts that claim 6 recites:
“two critical and distinct features. First, the accessory module
must have structure to angle the camera with respect to the
windshield-facing portion of the accessory module. And second,
that structure must angle the camera to compensate for the angle
of the windshield itself.”
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Tr. 43, ll. 4–9.
Patent Owner takes a different view of the disclosures in the cited
references. With respect to Rayner, Patent Owner asserts that Rayner does not
angle a camera with respect to a windshield facing portion of the accessory module
to partially compensate for the angle of the windshield. PO Resp. 10. Patent
Owner asserts that Rayner’s camera 22 of enclosure 86 “might be angled to not at
all compensate for the windshield angle.” PO Resp. 27 (citing Ex. 2006 ¶ 78)
(emphasis added). According to Patent Owner, “because the arms are angled
between the two sections does not mean the camera is angled to at least partially
compensate for the angle of the windshield.” Id.
Neither the written description nor claim 6 state what the functional
statement “to at least partially compensate for the angle of the windshield” in
claim 6 requires. Counsel for Patent Owner argued that this functional statement
means to take the windshield into account in some way when
setting up your alignment structure. So if you don't care if the
windshield is there or not, you can just point the thing directly
there. But if you want to compensate for it and do something
different with respect to it being there, then you are
compensating for the angle.
Tr. 51, l. 23–52, l. 6 (emphasis added).
Patent Owner also takes the position that the camera in Rayner is not angled
with respect to the windshield facing portion of the accessory module. Tr. 43,
ll. 4–15. Patent Owner asserts the Rayner camera is pointing directly out of the
windshield facing portion of the module at a 90-degree angle. Id. at 44, ll. 18–25.
Patent Owner admits that “90 degrees is an angle,” but asserts that “90 degrees
would not be compensating or offsetting.” Id. at 45, ll. 1–9.
It is beyond reasonable dispute that a person of ordinary skill would have
known that a camera should be pointed at the area intended to be photographed.
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For a rain sensor mounted on a vehicle windshield, the area to be photographed or
sensed may be the windshield itself, as disclosed in Ponziana, or it may be “a
larger area,” also as disclosed in Ponziana. Ex. 1004, col. 3, ll. 37–60. For a data
recorder as disclosed in Rayner, used to reconstruct events leading up to a vehicle
accident, and the accident itself (Ex. 1005, col. 1, ll. 29–41), the area to be
photographed or sensed includes preferably “the entire area ahead of the vehicle”
(id. at col. 1, ll. 50–55). Rayner also recognizes the need for some “adjustability”
to ensure proper orientation of the camera. Ex. 1005, col. 3, ll. 23–27.
“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421. Under the correct analysis under § 103(a),
“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.
In considering the orientation of a camera within an accessory module
mounted to a windshield to obtain the desired field of view for the camera, a
person of ordinary skill and creativity, that is a person with a degree in engineering
and at least two years of relevant experience (Pet. 13–14; PO Resp. 1), would
recognize the myriad factors that may affect the orientation of the camera. The
angle of the windshield may be substantially raked or angled towards the rear of a
vehicle, as in a sports car, or may be substantially vertical, as in a modern bus. The
camera may be at 90 degrees to the windshield-facing portion of the module when
mounted to a bus windshield, as shown in Ponziana and Rayner, and would be at
an angle other than 90 degrees when mounted to the sleek sports car. Both
applications compensate for the angle of the windshield to ensure that the field of
view of the camera covers the entire area ahead of the vehicle, as disclosed in
Rayner, and as recited in claim 6. We find unpersuasive Patent Owner’s assertion
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that “90 degrees is an angle,” but “would not be compensating or offsetting.”
Tr. at 45, ll. 1–9.
Petitioner has shown by a preponderance of the evidence that claim 6 is
unpatentable.
e. Dependent Claim 10
Claim 10, dependent from claim 6, requires that the accessory module is
mounted detachably to the attachment member at the interior surface of the vehicle
windshield by a “fastenerless attachment.” Ex. 1002, col. 54, ll. 40–43. We
construed the term “fastenerless attachment” to mean an attachment device that
does not use a fastener to mount detachably the accessory module.
Petitioner asserts that Rayner’s disclosed suction cups 88 and 90, shown in
Figure 2 of Rayner, or the “VELCRO-type hook and pile fasteners,” disclosed in
Rayner, “are a “fastenerless attachment,” as required by claim 10. Pet. 29–30
(citing Ex. 1005, col. 7, ll. 7–10). We agree. Although Patent Owner asserts that
Rayner’s suction cups attach directly to the windshield, and therefore would not
utilize “said attachment member” of the windshield, as required by claim 10 (PO
Resp. 55), Patent Owner does not direct us to persuasive evidence or argument
concerning the use of Velcro-type hook and pile fasteners disclosed in Rayner.
Further, Rayner also discloses the simple and inexpensive mounting systems of “a
suitable adhesive” or “double-sided adhesive tape.” Ex. 1005, col. 7, ll. 9–10.
Petitioner also asserts in its Reply that, based on the “admitted prior art” of
Blank (Ex. 1007), Ponziana discloses a fastenerless attachment. Reply 14. In our
Decision on Institution of this inter partes review, we did not institute a trial based
on any asserted ground of patentability involving Blank. We stated that “no
ground other than that specifically granted [in the Decision] is authorized for the
inter partes review.” Dec. on Inst. 24. Accordingly, we do not consider any
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argument asserting unpatentability based on Blank. The fact that our Decision
relied on Blank for claim interpretation because it was incorporated by reference
into the ’998 patent does not create a new ground of unpatentability available for
trial.
Petitioner relies on Ponziana for the “first attachment member,” which is
mounting element 26. Pet. 12, 17–18. As stated in Ponziana, a first mounting
element 26 is on windshield 15 (Ex. 1004, col. 3, ll. 11–13), and the accessory
module (rain sensor 24) attaches to mounting element 26 by a complementary
mounting area 32 on housing 30 (id. at col. 3, ll. 16–20). Thus, the issue is
whether the combined teachings of the references would have suggested to a
person of ordinary skill that the alternative accessory module mounting elements of
either suction cups or Velcro-type hook and pile fasteners, as disclosed in Rayner,
should be complementary to the windshield mounting element (i.e., element 26), as
disclosed in Ponziana. We determine, based on the reference disclosures, that this
combination would have been obvious.
Rayner discloses that the fastening devices disclosed are alternatives to other
known mounting devices. Ex. 1005, col. 7, ll. 30–37. Among the myriad fastening
options available, ranging from adhesives to the more complex structure disclosed
in Ponziana, we are persuaded, based on the reference disclosures, that it would
have been obvious to a person of ordinary skill and creativity to choose the
preferred fastening option.
We note that claim 6 recites an interior rearview assembly and a “separate”
accessory module. Ex. 1002, col. 53, ll. 10–11 (“an accessory module separate
from said interior rearview mirror assembly”). In Ponziana and in the embodiment
shown and described with respect to Figure 1 in Rayner, the mirror mount and the
module mount are integrated. Figure 2 in Rayner, however, discloses a module
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mount separate and distinct from a mirror mount. As stated clearly in Rayner, the
embodiment in Figure 2 “does not include a mirror or function as a rear-view
mirror.” Ex. 1005, col. 7, ll. 4–6. Based on this disclosure, a person of ordinary
skill would have appreciated the simplicity of Rayner’s Figure 2 embodiment,
which allows for more basic mounting structures, ranging from an adhesive to a
Velcro-type attachment, than when the mirror and module use a common mounting
system. The Velcro-type hook and pile fastener disclosed in Rayner uses two
components, a hook component and a pile component. As suggested by the
mounting structure in Ponziana, one mounting component is connected to the
windshield; and the second component is connected to the module. By attaching
the first component to the second component, the module is attached to the
windshield.
Moreover, the obviousness inquiry does not ask “whether the references
could be physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852,
859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; . . . . Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”); MCM Portfolio LLC
v. Hewlett-Packard Co., No. 2015-1091, slip op. at 19 (Fed. Cir., Dec. 2, 2015)
(holding that even if physical incorporation conflicts with one reference’s
instruction, the Board did not err in determining that the claimed subject matter
would have been obvious to a person of ordinary skill). The references need not
form a step-by-step instruction guide for their combination.
As discussed above, the parties assert that a person of ordinary skill has
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undergraduate degree in engineering with at least two years of relevant work
experience. Based on our analysis above, we determine that the combined
teachings of the references would have suggested to a person of ordinary skill the
assembly module recited in claim 10.
Petitioner has shown by a preponderance of the evidence that claim 10 is
unpatentable.
2. Obviousness Based on Ponziana, Rayner, and Kakinami
Petitioner asserts that claim 7 is unpatentable under 35 U.S.C. § 103(a) as
obvious over Ponziana, Rayner, and Kakinami. Pet. 30. Our analysis of Ponziana
and Rayner apply as discussed above.
a. Claim 7
Claim 7, dependent from claim 6, requires “a resilient element” disposed
between the windshield and accessory module to either cushion and/or seal the
accessory module with respect to the windshield.
Kakinami discloses a video camera mounted in an automobile to take
pictures of the scenes ahead of the automobile. Ex. 1006, col. 1, ll. 6–9. A boot is
connected between the camera and the windshield to isolate the camera lens from
moisture and dust. Ex. 1006, Abstract. Figure 2a from Kakinami is shown below.
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Figure 2a from Kakinami shows a cross-section of accessory
module 11 housing camera 20, with boot 18 attached to the
module and to the windshield.
As shown in Figure 2a, Kakinami discloses that one end of boot 18 is
connected to arm 11, which houses a camera, and the other end of boot 18 is
pressed against windshield 3. Ex. 1006, col. 2, ll. 39–41. Boot 18 defines a closed
chamber with the windshield to isolate video camera 20 from both the outside
atmosphere and the inside atmosphere of the automobile. Id. at col. 2, ll. 41–44.
As stated in Kakinami, if a video camera is mounted in the automobile, there may
be “problems caused by moisture or dust in the automobile.” Id. at col. 1,
ll. 25–28. A boot between the video camera and the front glass protects the lens of
the camera from dirt or moisture inside the automobile. Id. at col.1, ll. 53–55.
Thus, a cleaning of the lens may not be necessary and this reduces maintenance
labor. Id. at col.1, ll. 55–57. Boot 18 is made of synthetic material that absorbs the
vibrations of arm 11 and the windshield. Id. at col. 2, ll. 52–54.
Petitioner asserts that flexible boot 18 in Kakinami is a resilient element that
cushions and seals the accessory module. Pet. 33–34. According to Petitioner, it
would have been obvious to use boot 18 of Kakinami if one wanted the known
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advantages of both cushioning and sealing the accessory module relative to the
windshield. Id. at 34. The rationale for doing so is stated in Kakinami – to protect
the camera lens from dirt or moisture inside the vehicle and to reduce cleaning and
maintenance of the camera lens.
Patent Owner asserts that “Rayner’s disclosure of suction cups is not
sufficient to meet the limitations of claim 7.” PO Resp. 44. According to Patent
Owner, claim 7 requires that the cushioning or sealing is provided “when an
‘accessory module mounting portion is mounted to said first attachment member.’”
Id. at 45. Patent Owner also criticizes the basic disclosure of Kakinami. Id. at 47–
49. Patent Owner argues that Petitioner’s reliance on boot 18 of Kakinami is
“nonsensical and nonfunctional.” Id. at 52. That argument is not persuasive. See
In re Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference; . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Ponziana and Rayner would have suggested the basic structure recited in
independent claim 6. Claim 7, dependent from claim 6, adds “a resilient element”
disposed between the windshield and accessory module to either cushion and/or
seal the accessory module with respect to the windshield. Kakinami discloses this
same element for the same purpose as recited in claim 7. Kakinami also provides a
rationale for why the resilient element should be used. KSR, 550 U.S. at 421 (“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”). As the Supreme Court recognized, in many cases a person of
ordinary skill “will be able to fit the teachings of multiple patents together like
pieces of a puzzle.” KSR, 550 U.S. at 420.
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Petitioner has shown by a preponderance of the evidence that claim 7 is
unpatentable.
III. CONCLUSION
Based on the evidence and arguments, and the findings and analysis above,
Petitioner has demonstrated, by a preponderance of the evidence, that claims 6, 7,
and 10 of the ’998 patent are unpatentable under 35 U.S.C. § 103(a).
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 6, 7, and 10 of the ’998 patent are unpatentable.
This is a final decision. Parties to the proceeding seeking judicial review of
the decision must comply with the notice and service requirements of 37 C.F.R.
§ 90.2.

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FOR PETITIONER:
A. Justin Poplin
Timothy K. Sendek
Allan Sternstein
J0n Trembath
Douglas Link
jpoplin@lathropage.com
tsendek@lathropage.com
patent@lathropage.com
jtrembath@lathropage.com
Dlink@lathropgage.com

FOR PATENT OWNER:
David Cornwell
Richard D. Coller III
Daniel E. Yonan
Davidc-PTAB@skgf.com
rcoller-PTAB@skgf.com
dyonan-PTAB@skgf.com

Timothy A. Flory
Terence J. Linn
Flory@glbf.com
linn@glbf.com