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

Patent Trial and Appeal Board

Dec 21, 2015

13689801 (P.T.A.B. Dec. 21, 2015)

Trials@uspto.gov Paper 7
571–272–7822 Entered: December 21, 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 IPR2015-01426
Patent 8,692,659 B2
_______________

Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

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

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I. INTRODUCTION
TRW Automotive U.S. LLC (“Petitioner”) filed a Petition (Paper 2,
“Pet.”) requesting inter partes review of claims 37, 41, 43, and 45–48 of
U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna
Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6,
“Prelim. Resp.”) to the Petition. 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).
For the reasons set forth below, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing the unpatentability of
claims 37, 41, 43, and 45–48 of the ’659 patent. Accordingly, the Petition is
denied, and no trial is instituted.
A. Related Proceedings
The parties indicate that the ’659 patent is at issue in the following
district court case: Magna Electronics Inc. v. TRW Automotive Holdings
Corp., No. 1:14-cv-341 (W.D. Mich.). Pet. 4; Paper 5, 1. The parties also
indicate that the ’659 patent is at issue in the following International Trade
Commission (“ITC”) investigation: In re Certain Vision-Based Driver
Assistance System Cameras and Components Thereof, Inv. No. 337-TA-907.
Pet. 4; Paper 5, 1. Patent Owner indicates that the ’659 patent is the subject
of the petitions for inter partes review in IPR2015-00972, IPR2015-01427,
IPR2015-01428, IPR2015-01429, IPR2015-01430, IPR2015-01431,
IPR2015-01433, IPR2015-01436, IPR2015-01450, and IPR2015-01451.
Paper 5, 2.
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B. The ’659 Patent
The ’659 patent relates to an accessory mounting system for a vehicle.
Ex. 1002, col. 27, ll. 54–56. Some of the parties’ arguments discussed
herein focus on Figure 16B of the ’659 patent. Figure 16B is reproduced
below.

Figure 16B shows a header console and an interior rearview mirror
assembly. Id. at col. 27, ll. 56–59. Specifically, header console 8512
includes extension 8513 that extends down along the inner surface of the
windshield and behind mirror assembly 8510. Id. at col. 27, ll. 60–66.
Header console 8512 includes ample space and mounting surfaces for one or
more vehicle accessories, such as a global positioning system (“GPS”)
antenna, a rain sensor, or a camera. Id. at col. 27, ll. 60–66, col. 28, ll. 47–
54. The downward extending portion of header console 8512 may be
mounted to the inner surface of the windshield by attachment members, such
as rails or channels. Id. at col. 28, ll. 14–20. Mirror assembly 8510 includes
casing 8514 and reflective element 8516 and is detachably mounted to
mirror mounting button 8536. Id. at col. 28, ll. 30–35. Header console 8512
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includes forked portion 8513a that straddles mirror mounting button 8536.
Id. at col. 28, ll. 7–13.
C. Illustrative Claim
Claim 37 is independent and is reproduced below.
37. An accessory mounting system for a vehicle, said
accessory mounting system comprising:
an attachment element adhesively attached at an in-cabin
surface of a vehicle windshield of a vehicle equipped with said
accessory mounting system;
said attachment element comprising a mirror mounting
button;
at least one attachment member adhesively attached at the
in-cabin surface of the vehicle windshield local to said attachment
element;
an interior rearview mirror assembly comprising a mirror
head and a mirror support;
wherein said mirror head comprises a mirror reflective
element and a mirror casing;
wherein said mirror support comprises a mirror mount that
is configured to mount said interior rearview mirror assembly to
said mirror mounting button of said attachment element at the in-
cabin surface of the vehicle windshield;
a structure configured for mounting to said at least one
attachment member attached at the in-cabin surface of the vehicle
windshield;
said structure configured to receive and be supported by
said at least one attachment member that is adhesively attached at
the in-cabin surface of the vehicle windshield;
wherein said structure is configured to accommodate a
forward facing camera;
wherein, with said structure received by and supported by
said at least one attachment member and when said structure is
accommodating said forward facing camera, said forward facing
camera has a field of view through the vehicle windshield; and
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wherein, with said structure received by and supported by
said at least one attachment member, said mirror mount can be
mounted to said mirror mounting button of said attachment
element and can be demounted from said mirror mounting button
of said attachment element without demounting said structure
from said at least one attachment member.
Ex. 1002, col. 47, l. 46–col. 48, l. 19.
D. Evidence of Record
Petitioner relies on the following references and declaration (see
Pet. 2–3):
Reference or Declaration Exhibit No.
U.S. Patent No. 5,576,687 (“Blank”) Ex. 1006
U.S. Patent No. 5,796,094 (“Schofield”) Ex. 1007
U.S. Patent No. 5,667,896 (“Carter”) Ex. 1008
U.S. Patent No. 5,710,633 (“Klappenbach”) Ex. 1010
U.S. Patent No. 6,445,287 B1 (“the ’287 patent”) Ex. 1012
Declaration of Homayoon Kazerooni, Ph.D. Ex. 1213
E. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds (see Pet. 2–3):
Claims Challenged Basis References(s)
37, 41, 43, and 45–48 35 U.S.C. § 103(a) The ’287 patent
37, 41, 43, 45, and 47 35 U.S.C. § 103(a) Blank, Schofield,
and Klappenbach
46 35 U.S.C. § 103(a) Blank, Schofield,
Klappenbach, and
Carter
48 35 U.S.C. § 103(a) Blank, Schofield,
Klappenbach, and
Admitted Prior Art
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II. ANALYSIS
A. Claim Construction
The claims of an unexpired patent are interpreted using the broadest
reasonable interpretation in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278–79 (Fed. Cir. 2015). On this record and for purposes
of this decision, we determine that no claim terms require express
construction.
B. Asserted Grounds of Unpatentability
1. Obviousness of Claims 37, 41, 43, and 45–48 over the
’287 Patent
Petitioner argues that claims 37, 41, 43, and 45–48 would have been
obvious over the ’287 patent. Pet. 2. The ’659 patent is a continuation of
the ’287 patent. Id. at 19; Ex. 1002, col. 1, ll. 7–23. Petitioner argues that
the ’287 patent is prior art to the ’659 patent because the ’287 patent does
not satisfy the written description requirement with respect to the challenged
claims of the ’659 patent. Pet. 12–18. Patent Owner argues that the ’287
patent satisfies the written description requirement, and, thus, is not prior art
with respect to the challenged claims of the ’659 patent. Prelim. Resp. 5–20.
We have reviewed the parties’ assertions and supporting evidence, and, for
the reasons discussed below, Petitioner does not demonstrate a reasonable
likelihood of prevailing in showing that the ’287 patent is prior art.
Petitioner argues that the ’287 patent does not contain sufficient
written description of an attachment member attached to a vehicle
windshield and local to a mirror mounting button, as recited in the
challenged claims. Pet. 12–15 (citing Ex. 1213 ¶¶ 31–33, 40, 44–46).
Petitioner’s argument is not persuasive. The ’287 patent discloses the
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following:
As best understood from FIG. 16B, extension 8513 of header
console 8512 extends downwardly behind the upper portion of
windshield W (such portion of windshield W which typically
includes a shadeband element as known in the art) and includes
a forked portion 8513a, such as an inverted V-shaped or U-
shaped portion, which straddles a mirror mounting button 8536
that is mounted to windshield W. Optionally, the downwardly
extending portion of header/header console 8512 may be
mounted to the inner surface of windshield W, such as by an
adhesive or may be releasably, mechanically attached such as
by being received by and/or supported by one or more
attaching members adhered to the inner surface of the
windshield, such as by attachment members, including rails,
channels, or the like.
Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the
’287 patent describes a console that straddles (and thus is local to) a mirror
mounting button and is mounted to a vehicle windshield using attachment
members, such as rails or channels. Id. As such, the above disclosure in the
’287 patent is sufficient to show that the inventors had possession of the
claimed attachment member. See Ariad Pharm., Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010).
Petitioner argues that the ’287 patent does not contain sufficient
written description of demounting the mirror mount from the mirror
mounting button without demounting the structure supported by the
attachment member, as recited in the challenged claims. Pet. 13–14 (citing
Ex. 1213 ¶¶ 33, 40). Specifically, Petitioner argues that, in Figure 16B of
the ’287 patent, “[u]pward movement of the console 8512 . . . would be
blocked by the roof of the car,” and “[i]t is uncertain and simply remains
undisclosed what structure would permit separately demounting the mirror
assembly 8510 from the mirror button 8536 without removing the structure
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of console 8512 from its own separate attachment members.” Pet. 13–14.
Petitioner’s argument is not persuasive. The ’287 patent discloses that the
mirror assembly “detachably attaches” to the mirror mounting button. Ex.
1012, col. 28, ll. 38–40. As such, the ’287 patent explains that the mirror
assembly can be detached from the mirror mounting button without having
to demount the console from the attachment member.
Petitioner argues that the ’287 patent does not contain sufficient
written description of “how the ‘rails, channels or the like’ would adhere to
the windshield to permit co-engagement as the inverted U or V-shaped
portion 8513a engages the mirror mounting button 8536.” Pet. 14 (citing
Ex. 1213 ¶¶ 33, 40). Petitioner’s argument is not persuasive because the
challenged claims of the ’659 patent do not recite that the attachment
member or the structure supported by the attachment member engage the
mirror mounting button. See Ariad, 598 F.3d at 1351 (“[T]he test for
sufficiency is whether the disclosure . . . reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter.”)
(emphasis added). Further, as discussed above, the ’287 patent explains that
the console supported by the attachment member straddles the mirror
mounting button; it does not engage the mirror mounting button. Ex. 1012,
col. 28, ll. 15–28.
Petitioner argues that, although the ’287 patent discloses that the
structure supported by the attachment member may include a camera, the
’287 patent does not specify that the camera is forward facing or that it is a
CMOS device. Pet. 16–18 (citing Ex. 1213 ¶ 39). Petitioner’s argument is
not persuasive. The ’287 patent discloses that the console supported by the
attachment member in Figure 16B provides mounting surfaces for various
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vehicle accessories, including those described in previous embodiments in
the ’287 patent and in the referenced copending applications. Ex. 1012, col.
28, ll. 1–7. Previous embodiments in the ’287 patent indicate that the
vehicle accessories mounted on the console may include a CMOS camera
and a rain sensor that uses a forward facing camera. Id. at col. 24, ll. 1–8,
col. 37, ll. 27–32. Further, referenced copending Application No.
09/433,467 (now U.S. Patent No. 6,326,613) indicates that the vehicle
accessories mounted on the console may include a forward facing camera.
Id. at col. 26, l. 63–col. 27, l. 12 (incorporating by reference copending
Application No. 09/433,467); Ex. 3001, col. 5, ll. 8–12.
For at least the foregoing reasons, Petitioner does not show
sufficiently that the ’287 patent is prior art to the ’659 patent, and, therefore,
does not demonstrate a reasonable likelihood of prevailing in showing that
claims 37, 41, 43, and 45–48 would have been obvious over the ’287 patent.
2. Obviousness of Claims 37, 41, 43, 45, and 47 over Blank,
Schofield, and Klappenbach
Petitioner argues that claims 37, 41, 43, 45, and 47 would have been
obvious over Blank, Schofield, and Klappenbach. Pet. 2. We have reviewed
Petitioner’s assertions and supporting evidence, and, for the reasons
discussed below, Petitioner does not demonstrate a reasonable likelihood of
prevailing in showing that claims 37, 41, 43, 45, and 47 would have been
obvious over Blank, Schofield, and Klappenbach.
Petitioner relies on Blank as teaching the claimed mirror mounting
button attached to a vehicle windshield. Id. at 39–40. Petitioner relies on
the fastening device and housing in Klappenbach as teaching the claimed
attachment member and the claimed structure configured for mounting to the
attachment member, respectively. Id. at 40, 45. Petitioner relies on the
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vehicle headlight dimming control in Schofield as teaching the claimed
forward facing camera. Id. at 46.
Klappenbach relates to a particular type of optical sensor that detects
foreign bodies, such as raindrops, on a vehicle windshield. Ex. 1010, col. 1,
ll. 8–14. Klappenbach explains that, in order for this particular sensor to
function properly, it must be optically coupled directly to the windshield. Id.
at col. 1, ll. 35–39. Klappenbach accomplishes this by enclosing the sensor
in a housing that engages with a fastening device glued to the windshield.
Id. at col. 1, ll. 51–59. Figure 1 of Klappenbach is reproduced below.

Figure 1 of Klappenbach shows sensor 1 with outer housing 2 and inner
housing 3 that can be mounted to a fastening device glued to the windshield.
Id. at col. 3, ll. 3–10. Schofield relates to a vehicle headlight dimming
control that includes an image sensor. Ex. 1007, col. 3, ll. 36–41. Figure 1
of Schofield is reproduced below.
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Figure 1 of Schofield shows vehicle headlight dimming control 12 that
includes an imaging sensor module for sensing light from a scene forward of
vehicle 10. Id. at col. 3, ll. 36–40.
We are not persuaded, on this record, that the proposed combination
of Blank, Schofield, and Klappenbach teaches or suggests all the limitations
of the challenged claims. Independent claim 37 recites “a structure
configured for mounting to said at least one attachment member . . . wherein
said structure is configured to accommodate a forward facing camera.” Ex.
1002, col. 47, l. 65–col. 48, l. 6. Petitioner argues that the housing in
Klappenbach corresponds to the claimed structure configured to
accommodate a forward facing camera, and that the vehicle headlight
dimming control in Schofield includes the claimed forward facing camera.
Pet. 45–49. The housing in Klappenbach is designed specifically to
accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex.
1010, col. 3, ll. 46–67, Fig. 1. Petitioner does not provide a specific
explanation or identify specific evidence showing that the housing in Figures
1 and 2 of Klappenbach also is configured to accommodate a forward facing
camera. Pet. 45–49. Therefore, on this record, Petitioner has not shown
sufficiently that the combined teachings of Blank, Schofield, and
Klappenbach would have taught or suggested the limitation “said structure is
configured to accommodate a forward facing camera” to one of ordinary skill
in the art.
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We also are not persuaded, on this record, that it would have been
obvious to combine the cited teachings of Schofield and Klappenbach.
Petitioner argues that it would have been obvious to use the vehicle
headlight dimming control in Schofield rather than the rain sensor in
Klappenbach because the vehicle headlight dimming control in Schofield
provides more functionality. Id. at 48 (citing Ex. 1213 ¶ 56). Petitioner’s
argument explains why one of ordinary skill in the art would select the
vehicle headlight dimming control in Schofield rather than the rain sensor in
Klappenbach, but does not explain why it would have been obvious to
mount the vehicle headlight dimming control in Schofield using the
fastening device and housing in Klappenbach.
Petitioner argues that the housing in Klappenbach would
advantageously seal the components of the camera in Schofield to prevent
intrusion of elements from the environment. Pet. 48 (citing Ex. 1213 ¶ 58).
Petitioner’s argument is not persuasive because Schofield teaches that the
imaging sensor module disclosed therein already is protected from such
intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in
Klappenbach is not just a protective housing for sensor components, but,
rather, a structure designed specifically to accommodate transmitter 10 and
receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1.
Petitioner also argues that the fastening device in Klappenbach can be
preinstalled. Pet. 48–49 (citing Ex. 1213 ¶ 58). Petitioner does not explain,
though, why that would have made it obvious to use the fastening device and
housing in Klappenbach with the vehicle headlight dimming control in
Schofield. Moreover, Petitioner does not provide a specific explanation or
identify specific evidence showing that it would have been obvious to one of
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ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach
is, or can be, configured to accommodate a forward facing camera generally
or the vehicle headlight dimming control in Figure 1 of Schofield
particularly. Pet. 45–49. Therefore, on this record, Petitioner has not shown
sufficiently that it would have been obvious to one of ordinary skill in the art
to combine the cited teachings of Blank, Schofield, and Klappenbach in the
manner proposed by Petitioner.
For at least the foregoing reasons, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing that claims 37, 41, 43, 45,
and 47 would have been obvious over Blank, Schofield, and Klappenbach.
3. Obviousness of Claim 46 over Blank, Schofield,
Klappenbach, and Carter
Petitioner argues that claim 46 would have been obvious over Blank,
Schofield, Klappenbach, and Carter. Pet. 3. Claim 46 depends from claim
37. Id. at 55. Petitioner relies on the same arguments and evidence
discussed above as to why it would have been obvious to combine the cited
teachings of Schofield and Klappenbach. Id. at 55–58. For the reasons
discussed above, we are not persuaded, on this record, that it would have
been obvious to combine the cited teachings of Schofield and Klappenbach.
See supra Section II.B.2. Therefore, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing that claim 46 would have
been obvious over Blank, Schofield, Klappenbach, and Carter.
4. Obviousness of Claim 48 over Blank, Schofield,
Klappenbach, and Admitted Prior Art
Petitioner argues that claim 48 would have been obvious over Blank,
Schofield, Klappenbach, and Admitted Prior Art. Pet. 3. Claim 48 depends
from claim 37. Id. at 59. Petitioner relies on the same arguments and
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evidence discussed above as to why it would have been obvious to combine
the cited teachings of Schofield and Klappenbach. Id. 59–60. For the
reasons discussed above, we are not persuaded, on this record, that it would
have been obvious to combine the cited teachings of Schofield and
Klappenbach. See supra Section II.B.2. Therefore, Petitioner does not
demonstrate a reasonable likelihood of prevailing in showing that claim 48
would have been obvious over Blank, Schofield, Klappenbach, and
Admitted Prior Art.
III. CONCLUSION
Petitioner does not demonstrate a reasonable likelihood of prevailing
on its challenge to the patentability of claims 37, 41, 43, and 45–48 of the
’659 patent as unpatentable under 35 U.S.C. § 103.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and no trial is instituted.
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PETITIONER:

Timothy K. Sendek
Allan Sternstein
A. Justin Poplin
Dan Cleveland Jr.
LATHROP & GAGE LLP

PATENT OWNER:

David K.S. Cornwell
Mark W. Rygiel
STERNE, KESSLER, GOLDSTEIN & FOX PLLC

Timothy A. Flory
Terence J. Linn
GARDNER, LINN, BURKHART & FLORY, LLP