TRW Automotive US LLCv.Magna Electronics Inc.

Patent Trial and Appeal Board

Jun 26, 2014

13351098 (P.T.A.B. Jun. 26, 2014)

Trials@uspto.gov Paper No. 16
571.272.7822 Entered: June 26, 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 IPR2014-00257
Patent 8,203,440 B2
____________

Before JUSTIN T. ARBES, BART A. GERSTENBLITH, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

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

I. INTRODUCTION
TRW Automotive US LLC (“TRW”) filed a Petition (“Pet.”) to
institute an inter partes review of claims 1, 2, 5–14, 16–21, 24, 26, 27, and
29–31 of U.S. Patent No. 8,203,440 B2 (“the ’440 patent”). Pet. 3. Patent
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Owner Magna Electronics Inc. (“Magna”) filed a Preliminary Response on
March 28, 2014 (“Prelim. Resp.”). Paper 7. We have jurisdiction under 35
U.S.C. § 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a):
THRESHOLD.— The Director may not authorize an inter
partes review to be instituted unless the Director determines
that the information presented in the petition filed under section
311 and any response filed under section 313 shows that there
is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
Inter partes review is instituted only if the petition supporting the ground
demonstrates “that there is a reasonable likelihood that at least one of the
claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c).
On this record, we find that TRW has not established a reasonable
likelihood of prevailing with respect to at least one challenged claim of the
’440 patent. Accordingly, we deny the Petition and decline to institute an
inter partes review of the ’440 patent.
A. Related Proceedings
TRW indicates that the ’440 patent is involved in a district court
infringement action, Magna Electronics Inc. v. TRW Automotive Holdings
Corp., No. 1:12-cv-00654-PLM (W.D. Mich.). Pet. 4.
B. The ’440 Patent (Ex. 1002)
The ’440 patent, titled “Vehicular Vision System,” describes “a
vehicle lighting control system for controlling a vehicle lighting system in an
automotive vehicle comprising a photosensor array means for sensing light
levels in a forward field of view.” Ex. 1002, 6:54–57. In the integrated
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headlight control system disclosed, the photosensor array is directed
generally forward of the vehicle “so that it may sense a field of view forward
of the rearview mirror.” Id. at 32:59–62. A portion of the photosensor array
captures image data representative of at least one item of interest exterior of
the vehicle and within the forward field of view and at least one of several
characteristics of the at least one item of interest is determined. Id. at 45:29–
42. The system, “responsive at least in part to said vehicular vision system
sensing the presence of said object,” performs at least one of
“(i) control[ling] a vehicle system using forward field of view information
and (ii) supplement[ing] control of a vehicle system using forward field of
view information.” Id. at 45:45–50.
C. Illustrative Claim
TRW challenges claims 1, 2, 5–14, 16–21, 24, 26, 27, and 29–31 of
the ’440 patent. Claims 1 and 26 are independent claims. Claim 1 is
illustrative of the claimed subject matter, and reads (paragraphing added):
1. A vehicular vision system for a vehicle, said vehicular
vision system comprising:
a photosensor array comprising a plurality of photosensor
elements arranged in a predefined arrangement;
said photosensor array having a field of view forward of
the vehicle that is generally in line with the vehicle’s primary
direction of forward travel;
wherein said photosensor array is disposed at an interior
portion of the vehicle proximate a windshield of the vehicle and
has a forward field of view to an exterior of the vehicle through
the windshield of the vehicle at a windshield area that is swept
by windshield wipers;
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a portion of said photosensor array capturing image data
representative of at least one item of interest exterior the vehicle
and within said forward field of view;
a control responsive to an output of said photosensor
array;
wherein said control comprises a logic and control
circuit;
wherein said logic and control circuit comprises an image
processor, said image processor processing at least said image
data;
said control analyzing said image data so as to determine
at least one of (a) presence of said at least one item of interest
exterior the vehicle, (b) size of said at least one item of interest
exterior the vehicle, (c) shape of said at least one item of
interest exterior the vehicle, (d) contour of said at least one item
of interest exterior the vehicle and (e) motion of said at least
one item of interest exterior the vehicle; and
wherein, at least responsive to said control analyzing said
image data, said vehicular vision system senses a presence of an
object within the field of view of said photosensor array, and
wherein said vehicular vision system, responsive at least in part
to said vehicular vision system sensing the presence of said
object, at least one of (i) controls a vehicle system using
forward field of view information and (ii) supplements control
of a vehicle system using forward field of view information.
D. The Prior Art
TRW relies on the following prior art references:
U.S. Patent No. 5,166,681, issued November 24, 1992
(“Bottesch”) (Ex. 1004).
U.S. Patent No. 5,245,422, issued September 14, 1993
(“Borcherts”) (Ex. 1005).
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Japanese Unexamined Patent Publication No. S62-131837,
published June 15, 1987 (“Yanagawa”) (Ex. 1006).
1

Oliver Vellacott, CMOS in Camera, 1994 IEE REVIEW 111–14
(“Vellacott”) (Ex. 1007).
Venturello, European Patent Application, Publication
No. 0353200 A2, published January 31, 1990 (“Venturello”)
(Ex. 1008).
E. The Asserted Grounds of Unpatentability
TRW challenges the patentability of claims 1, 2, 5–14, 16–21, 24, 26,
27, and 29–31 of the ’440 patent on the following two grounds:
2

References Basis Claims challenged
Bottesch, Borcherts,
Yanagawa, and Vellacott
§ 103(a)
1, 2, 5, 6,
3
9–14, 18–21, 26, 27,
30, 31
Bottesch, Borcherts,
Yanagawa, Vellacott, and
Venturello
§ 103(a) 7, 8, 16, 17, 24, 29

1
TRW relies upon what it refers to as a “certified translation, pp. 1-7.”
Pet. 11. The translation submitted as Exhibit 1006 includes the following at
the bottom, right-hand corner of the first page “IPR2013-00424 – Ex.
1009[,] Toyota Motor Corp., Petitioner[,] 1” and is six pages in length,
excluding the certification. Ex. 1006, 1. We refer to “Yanagawa” as the
English translation of the reference. TRW provided an affidavit attesting to
the accuracy of the translation. Ex. 1006, 7; 37 C.F.R. § 42.63(b).
2
TRW supports its challenge with a declaration executed by Jeffrey A.
Miller, Ph.D. on December 16, 2013 (“Miller Declaration”) (Ex. 1010).
3
TRW does not include claim 6 in the headings on pages 3 and 11 of the
Petition, but includes analysis of claim 6 at page 27 of the Petition.
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II. ANALYSIS
A. Claim Interpretation
Consistent with the statute and legislative history of the America
Invents Act, the Board interprets claims of an unexpired patent using the
“broadest reasonable construction in light of the specification of the patent in
which [they] appear[].” 37 C.F.R. § 42.100(b); see also Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms
are given their ordinary and customary meaning as would be understood by
a person of ordinary skill in the art at the time of the invention and in the
context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007). We apply this standard to the claims of the
’440 patent. See Pet. 6 (proposing to construe the terms of the ’440 patent in
accordance with this standard).
For the purposes of this decision, none of the claim terms recited in
the claims need to be construed explicitly.
B. 35 U.S.C. § 103(a)
The analysis under 35 U.S.C. § 103(a) is objective and includes a
determination of “the scope and content of the prior art,” the “differences
between the prior art and the claims at issue,” and “the level of ordinary skill
in the pertinent art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18
(1966)). The analysis also includes such secondary considerations as
“commercial success, long felt but unsolved needs, [and] failure of others”
amongst other considerations “to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.” Id. (citing Graham,
383 U.S. at 17–18).
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In undertaking this inquiry:
Often, it will be necessary . . . to look to interrelated teachings
of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.
Id. at 418. The Supreme Court explained that “[t]o facilitate review, this
analysis should be made explicit,” agreeing with the Federal Circuit that
“‘rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.’” Id.
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Against this backdrop, we consider TRW’s allegations.
C. Obviousness over Bottesch, Borcherts, Yanagawa, and Vellacott
TRW contends that claims 1, 2, 5, 6, 9–14, 18–21, 26, 27, 30, and 31
would have been obvious under 35 U.S.C. § 103(a) over the combination of
Bottesch, Borcherts, Yanagawa, and Vellacott. Pet. 11–47.
Bottesch is directed to vehicle presence detection systems that detect
“the presence of any object capable of varying light rays emanating
therefrom in contrast to the ambient light conditions.” Ex. 1004, 1:6–12.
Bottesch discloses “[m]onitoring the field of surveillance” by “using a single
photosensitive device or an array of such devices within tube structures
arranged to be directed at one or more areas of surveillance.” Id. at 2:40–43.
Bottesch monitors the arrays “for voltage or current fluctuations,” which
“are interpreted as indicating the presence of an object such as a vehicle.”
Id. at 2:45–48. Bottesch explains:
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The variation in reading from sensor tubes 15a, 15b, will
usually be gradual, however, when an object such as a vehicle
enters the field of vision or area of surveillance of sensor 15a,
as in FIG. 2, there will be registered an abrupt change in the
voltage which the microcomputer will interpret as the presence
of an object.
Id. at 5:31–37; see also id. at 5:59 – 6:15 (further explaining this process).
Borcherts is directed to “digital image processing systems, and, more
particularly, to systems for automatically controlling the steering of a
vehicle.” Ex. 1005, 1:9–11. In particular, an image input device, such as a
video camera, “is used to monitor the read geometry and traffic condition in
front of the vehicle 10 by providing a plurality of frames of video images of
the road.” Id. at 2:50–56. “Image digitization and electronics and
processing unit 14 is made up of both hardware and software. The hardware
is connected to image input device 12 and contains all the signal
conditioning electronics.” Id. at 2:63 – 3:1. The hardware includes “image
digitizing frame grabbers for converting each frame of the analog video
images to digital signals or pulses, and computer processors for providing
digital image processing.” Id. at 3:1–5. The software “provides control for
the image input device 12, image processing for lane detection and a
predictor for improving the efficiency of the image processing function by
providing for the necessary search area.” Id. at 3:5–9.
Yanagawa is directed to “a recognition device for a traveling vehicle
which recognizes the presence of taillights of a vehicle traveling ahead and
headlights of an oncoming vehicle[,] . . . calculates and displays the
interrelationship with the vehicle ahead, and is capable of controlling the
device vehicle’s headlights automatically.” Ex. 1006, 1. Yanagawa
explains that the traveling vehicle recognition device
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has an imaging apparatus such as a color television camera . . .
for imaging . . . the forward direction of a traveling vehicle,
extracts color features of headlights and taillights to form a
feature extracted color image signal . . . recognizes the
headlights and taillights of a vehicle ahead, and controls the
headlight beams based on this . . . result.
Id. at 2.
Vellacott discloses that a CMOS [complementary metal oxide
semiconductor] image sensor (imputer) was used in a field trial to develop
“electro-chromic rearview mirrors, which automatically reduce headlamp
glare from behind.” Ex. 1007, 4. Vellacott describes that “[t]he imputer was
programmed to analyze [an] image to recogni[z]e when and where
headlamps are present in the field of view . . . [and] dim[] the rear-view and
wing mirrors automatically to reduce glare to the driver.” Id.
Magna contends, inter alia, that TRW “failed to articulate any reason
why a [person of ordinary skill in the art] would have thought to combine
the references—or why a [person of ordinary skill in the art] would have
thought that the references could even operate as required after being
combined.” Prelim. Resp. 28. Magna thus asserts that “because TRW failed
to provide and support sufficient obviousness rationales in view of the
Supreme Court’s KSR decision—which infects TRW’s entire obviousness
analysis—TRW cannot meet the minimum threshold showing that it is likely
to prevail in proving any of its grounds of obviousness.” Id. at 30.
As noted above, TRW’s first assertion of obviousness relies upon a
combination of four references. See, e.g., Pet. 11. TRW relies upon
Yanagawa as disclosing many of the elements of the claims, including
elements of independent claims 1, 12, 20, and 26 without an express
indication that such reliance is in the alternative to an additional reference.
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Pet. 13-47. Thus, TRW’s position is that Yanagawa is part of, and necessary
to, the proposed combination of references that allegedly renders the claims
unpatentable.
TRW, however, fails to provide a sufficient reason with rational
underpinning as to why one of ordinary skill in the art would have been
prompted to combine the teachings of Yanagawa with those of the other
three references to achieve the claimed systems. In particular, the entirety of
TRW’s assertion with respect to Yanagawa is that it “is properly combinable
with Bottesch and/or Borcherts for providing a different vehicle control
signal option that was well known in the art from the same basic vehicular
vision system structure.” Pet. 13. The fact that another option existed, in
and of itself, does not explain why one of ordinary skill in the art would
have been prompted to combine that option with the teachings of the other
references at the time of the invention. Further, even if TRW’s purported
reason for combining with Yanagawa was sufficient, TRW does not link that
reason to the particular claim limitations TRW relies on Yanagawa as
teaching, or explain sufficiently the particular combination of Yanagawa
with the other three references. See Pet. 13, 16, 19–20, 22–23.
Although TRW does not cite the Miller Declaration in support of its
alleged rationale for combining Yanagawa, we have reviewed the Miller
Declaration and conclude it does not remedy the deficiency of the Petition.
The Miller Declaration largely parrots the Petition, and does not provide any
additional reason with rational underpinning as to why one of ordinary skill
in the art would have been prompted to combine the teachings of Yanagawa
with those of Bottesch, Borcherts, and Vellacott. See, e.g., Ex. 1010, 13–14
(noting with respect to the last “wherein” clause of claim 1 that “[a]ny of the
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above listed references would be combinable to utilize and substitute the
known and disclosed elements in the additional references,” without
explaining why one of ordinary skill would have been prompted to do so).
Based on the foregoing, we determine that TRW has not demonstrated
a reasonable likelihood that claims 1, 2, 5, 6, 9–14, 18–21, 26, 27, 30, and 31
are unpatentable over Bottesch, Borcherts, Yanagawa, and Vellacott.
D. Obviousness over Bottesch, Borcherts, Yanagawa, Vellacott, and
Venturello
TRW contends that claims 7, 8, 16, 17, 24, and 29 would have been
obvious under 35 U.S.C. § 103(a) over the combination of Bottesch,
Borcherts, Yanagawa, Vellacott, and Venturello. Pet. 47-56.
Bottesch, Borcherts, Yanagawa, and Vellacott are described above.
Venturello is directed to “the display of scenes in conditions of low
visibility,” and more particularly, “to its possible use for facilitating the
driving of motor vehicles in conditions of poor visibility, for example in
fog.” Ex. 1008, 2. Venturello discloses a method for detecting images of an
object employing the following steps: “sending a train of light pulses
towards the object,” “observing the object illuminated by the pulses in
respective time windows,” “reconstructing images of the object from the
observation in the respect[ive] time windows,” and “displaying the image
thus reconstructed.” Id.
Magna’s contention, discussed above, with respect to TRW’s failure
to articulate a reason as to why one of ordinary skill in the art would have
thought to combine Bottesch, Borcherts, Yanagawa, and Vellacott, for
purposes of the challenged independent claims, also applies to TRW’s
assertion that dependent claims 7, 8, 16, 17, 24, and 29 would have been
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obvious. See Prelim. Resp. 28, 30.
TRW does not raise any additional reason as to why one of ordinary
skill in the art would have been prompted to combine Yanagawa with the
other four references asserted in this ground. Accordingly, because TRW
relies upon Yanagawa for this contention of obviousness, and because TRW
has failed to provide a reason with rational underpinning as to why one of
ordinary skill in the art would have been prompted to combine the teachings
of Yanagawa with Bottesch, Borcherts and Vellacott, as discussed above,
TRW similarly has not demonstrated a reasonable likelihood that claims 7,
8, 16, 17, 24, and 29 are unpatentable over Bottesch, Borcherts, Yanagawa,
Vellacott, and Venturello.
III. CONCLUSION
For the foregoing reasons, TRW has not demonstrated that there is a
reasonable likelihood that it would prevail in showing the unpatentability of
at least one claim of the ’440 patent.
IV. ORDER
For the reasons given, it is
ORDERED that the Petition challenging the patentability of the
claims of U.S. Patent No. 8,203,440 B2 is denied.

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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