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

Patent Trial and Appeal Board

Dec 1, 2014

13470860 (P.T.A.B. Dec. 1, 2014)

Trials@uspto.gov Paper 8
Tel: 571-272-7822 Entered: December 1, 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 IPR2014-00869
Patent 8,405,726 B2
_______________

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

GROSSMAN, Administrative Patent Judge.

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

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I. INTRODUCTION
TRW Automotive US LLC (“Petitioner”) filed a Petition requesting an inter
partes review of claims 1, 6, 7, 9–14, 16–18, 28–30, 33, 37–42, 45–49, 52–60, and
65 of U.S. Patent No. 8,405,726 B2 (“the ’726 patent”). Paper 1 (“Pet.”). Patent
Owner, Magna Electronics Inc. (“Patent Owner”), filed a Preliminary Response.
Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 6(b)(4). We
review the Petition under 35 U.S.C. § 314, which provides that 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.”
Upon consideration of the Petition and Preliminary Response, we determine
that the information presented does not show that there is a reasonable likelihood
that Petitioner would prevail in establishing the unpatentability of any of the
challenged claims. Accordingly, we deny the Petition and do not institute an inter
partes review of the ’726 patent.
A. Related Proceedings
TRW states that the ’726 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. 2013). Pet. 3.
B. The ’726 Patent
The ’726 patent is titled “Vehicle Accessory System.” Figure 6 from the
’726 patent, reproduced below, shows the basic components in one embodiment of
the disclosed accessory system. The accessory system in the ’726 patent attaches
to the interior of windshield 12 of a vehicle. Ex. 1002, Abstract. The system
includes a mounting element and module 10 for the accessory. Id.
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Figure 6 is a side elevation of accessory module 10 mounted to
windshield 12, with a rearview mirror mounted to the module.
A mounting element attaches to the windshield, and a module for an
accessory attaches to the mounting element. Id., Abstract. In all of the challenged
claims, the accessory is a camera. See, e.g., id. at col. 51, l. 41. The module
orients the field of view of the camera. Id., Abstract. In addition to a camera or
other accessory, an interior rearview mirror assembly also may be attached to the
mounting element. Id. In order to illustrate and describe the multiple disclosed
embodiments, the ’726 patent includes 68 drawings, many of which include
multiple sub-drawings, such as Figure 68, which has six sub-drawings labelled
68A–68F; and 51 columns of text. Petitioner directs us to Figures 66–68, which
Petitioner asserts are relevant to the challenged claims. Pet. 7–8. Figure 68A and
Figure 68B are reproduced below.
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Figure 68A Figure 68B
Figures 68A and 68B are plan and perspective views,
respectively, of accessory module 2110, accessory housing 2111,
and mounting module 2110a.
As shown above, windshield mounted accessory module 2110 includes
mounting module 2110a, mounted or secured to an interior surface of a windshield
(not shown), and accessory housing 2111, mounted to mounting module 2110a.
Ex. 1002, col. 43, ll. 30–35. Accessory housing 2111 includes casing 2111a and
cover plate 2111b. Id. at col. 43, ll. 35–36. Cover plate 2111b defines cavity
2113, which is recessed within casing 2111a. Id. at col. 43, ll. 48–49. Accessory
housing 2111 includes a camera or image sensor (not shown), which is positioned
within housing 2111 and aligned with an aperture or opening in cavity 2113 of
cover plate 2111b. Id. at col. 43, ll. 49–53. Independent claim 1 requires the
housing to have a wedge-shaped recess that tapers from the vehicle windshield. Id.
at col. 51, ll. 45–49. Independent claims 28 and 40 require the recess in the
housing to taper, but do not require a wedge-shape. Id. at col. 54, ll. 33–37;
col. 56, ll. 49–53. Independent claims 33 and 47 require a recess, but do not
specify the shape. Id. at col. 55, ll. 32–33; col. 57, ll. 48–49. When assembled and
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mounted at the windshield, the camera of accessory module housing 2111 is
oriented in a generally horizontal position for viewing through aperture 2113a and
capturing an image occurring generally in front of the vehicle. Id. at col. 44,
ll. 31–36.
C. Illustrative Claim
Among the challenged claims, claims 1, 28, 33, 40, and 47 are independent
claims. All of the challenged claims relate to “[a]n accessory system for a
vehicle.” See, e.g., Ex. 1002, col. 51, l. 20. Claim 1, reproduced below, is
illustrative of the claimed invention:
1. An accessory system for a vehicle, said vehicular
accessory system comprising:
a mounting element;
wherein a first side of said mounting element comprises an
attachment portion for attachment of said mounting element at a
vehicle windshield of a vehicle equipped with the accessory
system;
wherein, at least when said mounting element is attached at
the vehicle windshield, a module is mounted at a second side of
said mounting element that opposes said first side;
wherein said module comprises a housing having a
windshield-facing side that faces towards the vehicle windshield
when said module is mounted at said second side of said
mounting element attached at the vehicle windshield;
wherein said housing of said module has a cabin-facing side
that faces away from the vehicle windshield towards the interior
cabin of the equipped vehicle when said module is mounted at
said second side of said mounting element attached at the vehicle
windshield;
wherein a camera is disposed in said housing between said
windshield-facing side of said housing and said cabin-facing side
of said housing;
wherein said camera comprises an imager and a lens;
wherein said windshield-facing side of said housing
comprises a generally wedge-shaped recess:
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wherein, with said module mounted at said mounting
element attached at the vehicle windshield, said wedge-shaped
recess tapers from the vehicle windshield; and
wherein said camera, with said module mounted at said
mounting element attached at the vehicle windshield, views
through the vehicle windshield via said wedge-shaped recess.
D. References Relied Upon
Petitioner relies upon the following prior art references:

Reference Date Exhibit Number
Ponziana,
U.S. Pat. No. 6,066,933
Issued May 23, 2000 Ex. 1004
Kakinami,
U.S. Pat. No. 5,096,287
Issued Mar. 17, 1992 Ex. 1005
Kuehnle,
U.S. Pat. No. 6,392,218
Issued May 21, 2002 Ex. 1006
Blank,
U.S. Pat. No. 5,576,687
Issued Nov. 19, 1996 Ex. 1007
E. The Asserted Grounds
Petitioner asserts the following grounds of unpatentability under 35 U.S.C.
§ 103:
Claim(s) Challenged Statutory Basis References
1, 6, 7, 9–14, 17, 18,
28–30, 33, 37–41,
45–48, 52–60, and 65
§ 103(a) Ponziana
Kakinami
Kuehnle
16, 42, and 49 § 103(a) Ponziana
Kakinami
Kuehnle
Blank
II. ANALYSIS
A. Real Parties In Interest
In accordance with 37 C.F.R. § 42.8(b)(1), Petitioner identified “TRW
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Automotive U.S. LLC of Farmington Hills, Michigan” as the sole real party in
interest. Pet. 2.
Patent Owner asserts that Petitioner has “has made statements that call into
question the true identities” of the real parties in interest, as required by
35 U.S.C. § 312(a)(2). Prelim. Resp. 7. According to Patent Owner, Petitioner
“muddies the issue” by identifying “TRW Automotive Holdings Corp.” and “TRW
Vehicle Safety Systems Inc.” as co-defendants in the related litigation identified by
Petitioner and cited in Section I (A), above. Patent Owner also 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. According to Patent Owner, the fact that
the Annual Report of Petitioner’s parent corporation discusses Petitioner’s
financial position and operating results “suggests a tight financial integration”
between the two companies. Id. at 8. Patent Owner fails to state, however,
whether it is arguing that both TRW Automotive Holdings Corp. and TRW
Vehicle Safety Systems Inc. are real parties in interest, or whether it is arguing that
only Petitioner’s parent company, TRW Automotive Holdings Corp., is a real party
in interest. We address below the merits of Patent Owner’s assertions for both
companies.
A petition for inter partes review 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 in interest. 77 Fed. Reg. 48,756,
48,759–48,760 (Aug. 14, 2012). 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;
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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.
Generally 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 inter partes review solely because it is a
joint 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 non-party is a “real party-in-interest” to an inter partes review
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 sufficient to justify applying conventional
principles of estoppel and preclusion. Id.
The 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 Electronics North America
Corp., IPR2013-00609, Paper 15, 10 (PTAB March 20, 2014). Accordingly, we
look to the evidence on which Patent Owner 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.
Patent Owner speculates (Prelim. Resp. 7–8) about what the evidence
“undoubtedly exhibits” or “suggests” concerning the relationship of Petitioner to
its parent corporation, TRW Automotive Holdings Corp. 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 fact the this Annual Report states generally that the parent
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company “conduct[s] substantially all of [its] operations through subsidiaries”
(Ex. 2002, 2) 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, 12.
In RPX Corp. v. Virnetx, Inc., IPR2014-00171, Paper 52 (PTAB June 23,
2014),1 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 inter partes review; 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 Petitioner is acting as a proxy for TRW
Automotive Holdings Corp.
Patent Owner has not directed us to any evidence establishing a real party in
interest relationship between Petitioner and TRW Vehicle Safety Systems Inc.
other than Petitioner’s identification of the company as “related” and as a co-
defendant in a lawsuit. In Denso Corp. v. Beacon Navigation GmbH, IPR2013-
00026, Paper No. 34, 10–11 (PTAB March 14, 2014), the Board determined that
the mere fact that parties are co-defendants or concurrent defendants in litigation
does not 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. Patent Owner’s speculation

1 In RPX, the parties submitted a proposed redacted version (Paper 52) of the
Board’s decision. In Paper 53, the Board entered the redacted decision and ordered
that the redacted decision (Paper 52) would be available to the public.
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suggesting that TRW Vehicle Safety Systems Inc. is a real party in interest in this
proceeding has no persuasive evidentiary support.
Petitioner’s identification of the two other TRW entities as “related to
Petitioner” (Pet. 3) does not contradict Petitioner’s identification of the sole real
party in interest in this proceeding. Patent Owner’s speculation about the motives
of Petitioner, i.e., that Petitioner “appears to be attempting to evade the estoppel
effect” (Prelim. Resp. 8), also is unpersuasive.
Accordingly, based on the evidence before us, Patent Owner 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. Statutory Bar Under 35 U.S.C. § 315(a)(1)
Patent Owner asserts that the Petition is barred under 35 U.S.C. § 315(a)(1)
based on a counterclaim filed in related litigation. Prelim. Resp. 13–15.
Based on Patent Owner’s assertions in the Preliminary Response,2 Patent
Owner filed a complaint in March 2013 against Petitioner but never served the
complaint. Prelim. Resp. 13. Before any complaint was served, Petitioner filed an
Answer, which included a Counterclaim, asserting invalidity of the ’726 patent.
Id. According to Patent Owner, Petitioner filed its Petition in this proceeding after
it filed its Answer and Counterclaim. Id.

2 In the entire discussion of the asserted bar under Section 315(a)(1), Patent Owner
does not cite to a single document or other evidence in support of its position.
Patent Owner refers to “the complaint of March 2013” (Prelim. Resp. 13), but no
such complaint is of record in this proceeding. We are aware that Patent Owner
filed an Exhibit 2001 in this proceeding, which is an Answer and Counterclaim in a
suit between the parties, but the Preliminary Response does cite to this Exhibit. It
is Patent Owner’s responsibility to explain specific evidence that supports its
arguments, not the Board’s responsibility to search the record and piece together
evidence that may support Patent Owner’s arguments.
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Based on these asserted facts, Patent Owner argues that the so-called
“counterclaim” was really the first filed and served document in the litigation
between the parties, and, according to Patent Owner, it is this “counterclaim” that
initiated the law suit. Id. at 14. Patent Owner argues the so-called “counterclaim”
should be considered the beginning of a civil action challenging the validity of the
patent, thus barring a subsequent petition under Section 315(a)(1). Id.
Section 315(a)(1) states that “[a]n inter partes review may not be instituted
if, before the date on which the petition for such a review is filed, the petitioner or
real party in interest filed a civil action challenging the validity of a claim of the
patent.” Section 315(a)(3), however, provides a specific exemption for a
counterclaim. Section 315(a)(3) states that “[a] counterclaim challenging the
validity of a claim of a patent does not constitute a civil action challenging the
validity of a claim of a patent for purposes of this subsection.” Thus, the issue
presented is whether the counterclaim filed by Petitioner is a “civil action,” under
§ 315(a)(1), or whether it is a counterclaim under § 315(a)(3).
Petitioner cites the related proceeding of Magna Electronics Inc. v TRW
Automotive Holdings Corp., Case 1:13-cv-00324 (W.D. Mich.) Pet. 3. Exhibit
2001 submitted in this proceeding by Patent Owner is an Answer, including a
Counterclaim, from this same case. According to the publicly available docket
sheet from the court’s PACER records for this case, the complaint was filed on
March 26, 2013, and an Answer and Counterclaim were filed on May 31, 2013.
Ex. 3001, 6. The case then proceeded in normal fashion based on a complaint and
Answer with a counterclaim. Neither the caption of the case nor the case number
was changed because the named defendants filed an Answer and Counterclaim
before the complaint was served. A first amended complaint was filed on June 21,
2013. Id. A Joint Status Report was filed on July 11, 2013 identifying Magna
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Electronics, Inc. as “Plaintiff” and identifying the TRW entities as “Defendant.”
Ex. 3002, 1. The Joint Status Report also refers to the “counterclaims” asserted by
the TRW entities. Id. Thus, the court and the plaintiff treated the Answer and
Counterclaim as a counterclaim. Based on the evidence of record, there is no bar
because a counterclaim is not a civil action pursuant to § 315(a)(3).
C. Claim Construction
In an inter partes review, “[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.” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide,
77 Fed. Reg. 48,756, 48,764, 48,766 (Aug. 14, 2012) (Claim Construction); In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[W]hen
interpreting a claim, words of the claim are generally given their ordinary and
accustomed meaning, unless it appears from the specification or the file history
that they were used differently by the inventor.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994). Any special definition for a claim term must be set forth in the
specification with reasonable clarity, deliberateness, and precision. Id.
Cooling Means
Petitioner proposes a specific construction for the phrase “cooling means to
assist in cooling at least one electronic component housed in said housing,” which
appears in claim 14. Pet. 5. Petitioner asserts that this phrase is a means-plus-
function limitation and should be construed to cover the corresponding structure
that is described in the Specification and equivalents thereof. Id., citing
35 U.S.C. § 112 ¶ 6. According to Petitioner, this phase is limited to the structure
of “a ventilation element, such as an air passage between the interior surface of the
windshield and the component, or a surface of the component, near the
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windshield,” as described in the ’726 Patent. Id., citing Ex. 1002, col. 13, ll. 29–
38.3
Patent Owner agrees that the “cooling means” term is construed under
35 U.S.C. § 112 ¶ 6, but asserts that the structure disclosed in the Specification is
“an air passage” and equivalents thereof. Prelim. Resp. 21–22, citing Ex. 1002,
col. 13, ll. 29–55.
Section 112, ¶ 6 allows a patentee to express a claim limitation as “a means
or step for performing a specified function without the recital of structure, material,
or acts in support thereof.” Section 112, ¶ 6 also provides that claim limitations
expressed in this manner “shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents thereof.” The use of
the term “means,” as in claim 14 of the ’726 patent, triggers a rebuttable
presumption that § 112, ¶ 6 governs the construction of the claim term. Inventio
AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1356 (Fed. Cir.
2011). Here, it is clear that § 112, ¶ 6 governs. We construe the function of a
means-plus-function limitation to include the limitations contained in the claim
language, and only those limitations. Cardiac Pacemakers, Inc. v. St. Jude Med.,
Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). The function recited in claim 14 is “to
assist in cooling at least one electronic component housed in said housing.”
The structure disclosed in the written description of the specification is the
corresponding structure only if the written description of the specification or the
prosecution history clearly links, or associates, that structure to the function recited

3 Petitioner’s assertion is in accord with 37 C.F.R. § 42.104(b)(3) (“Where the
claim to be construed contains a means-plus-function or step-plus-function
limitation as permitted under 35 U.S.C. § 112(f), the construction of the claim must
identify the specific portions of the specification that describe the structure,
material, or acts corresponding to each claimed function.”)
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in a means-plus-function claim limitation. B. Braun Med., Inc. v. Abbott Labs.,
124 F.3d 1419, 1424 (Fed. Cir. 1997). Reviewing the Specification, we find clear
and unambiguous reference to the structure for the “cooling means.”
The ’726 patent discloses that it may be desirable to provide a ventilation
element, such as a ventilation passage or air passage, between the interior surface
of the windshield and the component or a surface of the component closest to the
windshield, in order to cool the accessory using air flowing through the passage.
Ex. 1002, col. 13, ll. 29–35. The Specification then states that “the accessory
module of the present invention may include such a passageway along the
interfacing surface against the windshield.” Id. at col. 13, ll. 35–39. Thus, the
structure disclosed to assist in cooling at least one electronic component housed in
the housing is a passageway in the accessory module along the interfacing surface
of the accessory module against the windshield.
The Specification also describes additional, optional structures that may
assist in cooling, such as fins on the surface of the accessory module or a fan. Ex.
1002, col. 13, ll. 37–48. Structural limitations from the written description that are
unnecessary to perform the claimed function, however, cannot be imported into the
claim. Welker Bearing Co. v. PhD, Inc., 550 F.3d 1090, 1097 (Fed. Cir. 2008)
(citing Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed.
Cir. 2001)). Thus, these optional structures, which are not necessary to perform
the claimed function, are not part of the structure in claim 14.
Accordingly, for purposes of this Decision, and based on the record before
us, the structure corresponding to the “cooling means” in claim 14 is a passageway
in the accessory module along the interfacing surface of the accessory module
against the windshield, and its equivalents.
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“Imager”
Petitioner proposes that the claim term “imager,” which appears in all the
challenged claims,4 should be construed to mean “a video camera, CMOS imaging
array sensor, CCD sensor, or the like, with or without a lens, which may be a
separate element.” Pet. 6. We note that the ’726 patent refers to an “image sensor
or camera (preferably a video camera, such as a CMOS imaging array sensor, a
CCD sensor or the like, such as the types disclosed in commonly assigned, U.S.
Pat. Nos. 5,550,677; 6,097,023 and 5,796,094, which are hereby incorporated
herein by reference).” Ex. 1002, col. 12, ll. 37–42.
Patent Owner asserts that Petitioner’s proposed construction violates “the
broadest reasonable construction rubric and the doctrine of claim differentiation.”
Prelim. Resp. 4. According to Petitioner, “the claimed imager of the ’726 patent
must be distinct from a lens.” Id. at 22.
We have considered Petitioner’s and Patent Owner’s proposed constructions
but determine that no express construction of the term “imager” is necessary for
purposes of this Decision.
D. Asserted Grounds of Unpatentability
1. Obviousness Based on Ponziana, Kakinami, and Kuehnle
Petitioner asserts that “[c]laims 1, 6-7, 9-14, 17-18, 28-30, 33, 37-41, 45-48,
52-60, and 65 are invalid and unpatentable under 35 U.S.C. 103(a) as obvious over
Ponziana (Ex. 1004) in view of Kakinami (Ex. 1005) and Kuehnle (Ex. 1006).”
Pet. 11 (emphasis added). Thus, Petitioner appears to assert a single ground of
unpatentability based on the combination of all three references against all the

4 See, e.g., claim 1, which includes the limitation “wherein said camera comprises
an imager and a lens.” Ex. 1002, col. 51, l. 44.
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challenged claims.5 Petitioner states that “[t]he primary reference is Ponziana,”
which, according to Petitioner, “contains all of the limitations in each claim, except
for certain details of the recess in the housing, which is nevertheless suggested by
Ponziana, but not expressly taught.” Id. at 12. Petitioner also asserts, however,
that the “housing recess shape limitations” are “clearly met” by Kakinami “and/or”
Kuehnle. Id. (emphasis added).6 Here, Petitioner appears to be asserting three
different grounds of unpatentability, based on either two or three references:
(1) Ponziana, Kakinami, and Kuehnle; or (2) Ponziana and Kakinami; or
(3) Ponziana and Kuehnle. Based on the ambiguous and inconsistent identification
of the references and application of the references to the challenged claims, it is
uncertain how the challenged claims are unpatentable in light of the references, as
required by 37 C.F.R. § 42.104(b)(3), (4).
a. Ponziana
Petitioner states that Ponziana is the “primary reference” (Pet. 12), so we
begin with an analysis of Ponziana. According to Petitioner, “Ponziana contains
all of the limitations in each claim, except for certain details of the recess in the
housing, which is nevertheless suggested by Ponziana, but not expressly taught.”
Id. Petitioner admits that Ponziana does not expressly describe the shape of the
recess in which the sensor sits.” Id.
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

5 See also, e.g., Petitioner’s discussion of independent claim 33, stating that “[i]n
summary, Ponziana discloses, in combination with Kakinami and Kuehnle, all of
the limitations from claim 33 of the ‘726 Patent.” Pet. 41 (emphasis added).
6 See also, e.g., Petitioner’s further discussion of independent claim 33, stating that
“claim 33 is not inventive over the prior art forward-facing camera modules taught
by Ponziana, Kakinami, and/or Kuehn.” Pet. 41 (emphasis added).
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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 a first mounting structure 26,
which, in turn, is adhered to inner surface 15b of windshield 15 using a suitable
adhesive 28. Ex. 1004, col. 3, ll. 9–13. While the Ponziana disclosure is directed
to a rain sensor, Ponziana states that a “CCD camera”7 may be provided as the
sensor 24. Id. at col. 3, ll. 65–67.
Sensor 24 includes a 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. As shown in Figure 3, circuit board 38 is mounted directly within
housing 30 using suitable screws or fasteners 37.
Housing 30 includes a first side 31 (see Figure 4) having an angled wall 30a,
which defines first mounting area 32 for receiving mounting structure 26. Id. at
col. 3, ll. 17–20. Housing 30 also includes second side 33 (see Figure 4) defining

7 As explained in Patent No. 6,097,023, (Ex. 3003), incorporated by reference into
the ’726 patent (Ex. 1002, col. 12, ll. 37–42), a photosensing array may be a charge
couple device (CCD) array of the type commonly utilized in video camcorders and
the like. Ex. 3003, col. 8, ll. 40–42.
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second angled wall 30b, which defines second mounting area 348 for receiving and
supporting base 36a of a mirror 36. Id. at col. 3, ll. 20–23. As shown in Figure 3
and as described in Ponziana, mounting area 32 and mounting area 34 define a
generally trapezoidal or dove tail shape, which connect sensor 24 to windshield 15
and connect mirror 36 on sensor 24, respectively. Id. at col. 4, ll. 25–28.
b. Kakinami
As shown below in Figure 2a from Kakinami, Kakinami discloses a video
camera mounted to an arm, which also supports the rear view mirror.

Figure 2a is a cross-sectional view of mounted camera.

8 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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As shown above, video camera 20 is mounted in arm 11, which also
supports rear view mirror 1. Ex. 1005, col. 2, ll. 15–16. Passage 12 in arm 11 is a
passageway for electric cables connected to video camera 20. Id. at col. 2, ll. 17–
19. Arm 11 also includes passage 13 for air. Id. The end portion of passage 12
towards front windshield 3 has a diameter large enough to accommodate video
camera 20. Id. at col. 22–24.
Air passage 13 opens into boot 18. Id. at col. 2, ll. 36–37. Air passage 13 is
directed towards front windshield 3. Id. at col. 2, ll. 37–38. One end of boot 18 is
connected to arm 11 and the other end of boot 18 is pressed against windshield 3 to
thereby define a closed chamber with the windshield 3 so the video camera 20 is
isolated from both the outside atmosphere and the inside atmosphere of the
automobile. Id. at col. 2, ll. 39–44.
c. Kuehnle
As shown in Figure 2 from Kuehnle, reproduced below, Kuehnle discloses a
rain sensor. Ex. 1006, col. 2, l. 64–col. 3, l. 4.

FIG. 2 is an assembly view of a rain sensor.

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Sensor 20 is intended to be mounted near the upper, inner portion of a
vehicle’s windshield. Id. Optical detector 23 is enclosed by front housing member
21 and back housing member 25. Id. at col. 3, ll. 8–9.
Kuehnle is relevant to the issues raised by Petitioner in this proceeding
primarily because of the shape of the housing, as discussed further below.
d. The Challenged Independent Claims
Against the background discussed above, we turn to the issue before us,
which is whether the information presented in the Petition and the Preliminary
Response shows that there is a reasonable likelihood that the Petitioner would
prevail with respect to at least one of the claims challenged in the Petition.
Independent claim 1 requires the housing to have a generally wedge-shaped,
tapered recess, with the camera viewing through the windshield via the recess.
Independent claims 28 and 40 require the housing to have a tapered recess through
which the camera views. Independent claims 33 and 47 require the housing to
have a recess through which the camera views. While this recess and its shape
have become the claim element on which the parties have focused their attention in
this proceeding,9 the ’726 patent disclosure does not emphasize this element. The
parties have not directed us to a discussion in the Specification or to a particular
reference numeral that identifies this recess. During prosecution of the application
maturing into the ’726 patent, the Applicant stated that support for the recess and
its shape “can be found in Fig. 66 through 68 specially in Fig. 68A–E.” Ex. 1003,
9. As shown in Figures 68B and 68C, shown above, accessory housing 2111
includes casing 2111a. Cavity 2113 is defined by cover plate 2111b and is
recessed within casing 2111a. Figures 68B and 68C appear to show that cavity

9 Neither Petitioner nor Patent Owner have proposed constructions for the terms
“recess,” “tapered recess,” or “wedge-shaped.”
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2113 is wedge-shaped and tapers as required in claim 1.
Based on the record before us, we are persuaded that Ponziana discloses a
mounting element, module, housing, and camera, as recited in claim 1. We also
agree with Petitioner that “Ponziana does not expressly describe the shape of the
recess in which the sensor sits.” Pet. 12.
Petitioner asserts that Kakinami illustrates in Fig. 2a a generally wedge-
shaped, tapered recess defined by boot 18 and windshield 3. Pet. 19, 21.
Petitioner also asserts that Figure 2 of Kuehnle also suggests a generally wedge-
shaped, tapered recess. Id. at 20, 21. Petitioner also asserts that, based on the
apparent “cutout view” in Figure 3 of Ponziana, a tapered recess is “plainly
visible” in Ponziana. Id. at 21. Petitioner relies on the Declaration of Homayoon
Kazerooni, Ph.D. E.g., Pet. 13, 19, 20, 26. We discuss Dr. Kazerooni’s
Declaration in the following Section of this Decision.
As a rationale for the proposed modification of Ponziana, Petitioner asserts
that the two secondary references “clearly demonstrate the obviousness” of using
the well-known structural design principles of a wedge-shaped, tapered recess.
Pet. 22. Petitioner also asserts that claim 1 “recites nothing more than the
combination of old and familiar elements according to known configurations and
methods, each performing the same function it had been known to perform,
yielding predictable results.” Id. at 25. According to Petitioner, any housing
structure in front of the camera lens “would necessarily taper outward from the
camera in a ‘wedge’ shape so that the field of view from the lens would not be
obstructed by the housing that secures the lens and the camera.” Id. at 26.
Petitioner, however, cites no persuasive evidence to support this statement, nor
does Petitioner explain why Petitioner concludes that the housing structure would
“necessarily taper.” Based on this assertion, Petitioner concludes, without citation
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of supporting evidence, that the proposed combination of prior art references
would have been “obvious to try.” Id. Petitioner also relies on the Declaration of
Dr. Kazerooni for evidentiary support of a rationale for the proposed combination
of references. Pet. 26, citing Ex. 1008 ¶¶ 59–66. Dr. Kazerooni asserts that
Kakinami mounts a camera directly with a boot 18 and indirectly with arm 11 to
the windshield, whereas Kuehnle uses the camera housing itself as the mounting
element to the windshield, and concludes that it would have been obvious “to
combine the relevant teachings of Ponziana with Kakinami and/or Kuehnle.” Ex.
1008 ¶ 60. Dr. Kazerooni does not explain which “relevant teachings” of
Kakinami and/or Kuehnle are being combined with Ponziana but instead states that
Kakinami and Kuehnle disclose different ways of situating a camera in a module
housing in relation to a rear view mirror and it would have been obvious “to
combine Ponziana with Kakinami and Kuehnle since each of the three references
pertains directly to a forward facing camera module located with or at a rear-view
mirror mounting element.” Id. ¶¶ 61, 63.
Patent Owner takes a different view of the disclosures in the cited
references. With respect to Kakinami, Patent Owner asserts that “boot 18 is not a
‘housing’ as claimed in the ’726 patent.” Prelim. Resp. 33. Patent Owner also
asserts that the camera 20 is not disposed within the asserted wedge-shaped recess
allegedly defined by boot 18 and windshield 3. Id. With respect to Kuehnle,
Patent Owner states that the Petitioner’s interpretation of the references is
speculative and is based on a view of the Kuehnle housing that Petitioner admits is
“not separately illustrated.” Id. at 35. Patent Owner also asserts that the lines
defining the “cutout view” in Figure 3 of Ponziana do not “impart structural
features.” Id. at 30.

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Independent claims 28 and 40 require the housing to have a tapered recess
through which the camera views. Independent claims 33 and 47 require the
housing to have a recess through which the camera views. While these claims
differ in scope from claim 1, with respect to the shape of the recess, Petitioner
asserts the same combination of two or three references asserted against claim 1 to
assert that the claims 28,33, 40, and 47 also would have been obvious based on the
cited references.
Petitioner bears the burden of establishing a reasonable likelihood of
unpatentability of one or more claims. 37 C.F.R. § 42.108(c). It is Petitioner’s
obligation to state the precise relief requested for each challenged claim. 37 C.F.R.
§ 42.104(b). We decline to speculate on the combination of references asserted by
Petitioner, that is, whether the asserted unpatentability is based on a combination
of three references or two references, as discussed above. Based on the record
before us, we are not persuaded that Petitioner has met its burden of establishing a
reasonable likelihood of success in establishing that the challenged claims are not
patentable. We are not persuaded that the various combinations of various features
and teachings of references asserted by Petitioner would render obvious a recess as
claimed or a camera located within the housing as claimed for the reasons
articulated by the Patent Owner and summarized above.
We recognize that mounting elements, modules, housings, and cameras exist
in the references cited by Petitioner. We also recognize that recesses of varying
shapes and for varying purposes also exist in the cited references. The existence of
common elements found in both the challenged claims and the references relied on
by Petitioner, however, does not establish that the challenged claims would have
been obvious. “[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently, known in
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the prior art.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[I]nventions
in most, if not all, instances rely upon building blocks long since uncovered, and
claimed discoveries almost of necessity will be combinations of what, in some
sense, is already known.” Id. at 418–419. As stated by our reviewing court,
Obviousness requires more than a mere showing that the
prior art includes separate references covering each separate
limitation in a claim under examination. Rather, obviousness
requires the additional showing 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.
Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (internal
citations omitted).
Petitioner also does not provide a rationale based on persuasive evidence or
argument for why a person of ordinary skill would have chosen certain features
from the cited references, omitted other features, and combined the selected
features to yield the invention in the challenged claims. Petitioner does not explain
how or why the teachings of the specific references would have been combined by
a skilled artisan, which combination(s) of elements in specific references would
yield a predictable result, or how any specific combination would operate or read
on the asserted claims and render those claims obvious. ActiveVideo Networks,
Inc. v. Verizon Comm’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012).
Petitioner’s statements of general principles from the case law that a
proposed combination is “nothing more than the combination of old and familiar
elements according to known configurations and methods, each performing the
same function it had been known to perform, yielding predictable results”
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(Pet. 2510) are argumentative conclusions. These conclusions are not a substitute
for a fact-based analysis of the proposed combination of references necessary to
support the conclusions. We recognize that 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). Petitioner, however, fails to
explain why a person of ordinary skill in the art would have combined elements
from specific references in the way the claimed invention does. ActiveVideo
Networks, 694 F. 3d at 1328 (citing KSR, 550 U.S. at 418).
We determine that Petitioner’s arguments do not provide the required
articulated reasoning with rational underpinning based on the evidence to support
the legal conclusion of obviousness. Based on the analysis above, the information
presented in the Petition does not show sufficiently why it would have been
obvious to combine Ponziana, Kakinami, and/or Kuehnle to arrive at and render
obvious the specific invention recited in the challenged claims.
Dr. Kazerooni’s Declaration
Exhibit 1008 is a Declaration by Homayoon Kazerooni, Ph.D. Petitioner
relies on Dr. Kazerooni’s Declaration for opinions and evidence to support
Petitioner’s assertion that the challenged claims would have been obvious. See,
e.g, Pet. 11 (“The discussion below stands on its own weight, but also cites to
Ex.1008 for supportive facts and reasoning from a perspective of one of ordinary
skill in the art.”). Dr. Kazerooni states that he “prepared this Declaration in
connection with my role as an expert witness.” Ex. 1008 ¶ 2. Dr. Kazerooni also
states that he was “asked to read, analyze, and formulate opinions concerning the

10 Petitioner’s Declarant, Dr. Homayoon Kazerooni, repeats verbatim this same
conclusory rationale. See Ex. 1008 ¶ 63.
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‘726 Patent.” Id.
Because Dr. Kazerooni’s Declaration is a near verbatim recitation of the
information in the Petition, Dr. Kazerooni’s Declaration suffers from the same
deficiencies described above for the Petition and does not provide any additional
facts, evidence, or analysis to support assertions in the Petition. Dr. Kazerooni
opines that the design of mounting structures for electronics “is usually a very
routine matter of combining existing design concepts.” Id. ¶ 27. Dr. Kazerooni
outlines his opinion of the basic design process, which is to identify the support
structure; identify the electronic system; and build a linkage to retain the electronic
system in the support. Id. Essentially, Dr. Kazerooni takes the position that this
design process is “very routine” because, in his opinion, one need only identify the
problem and then solve the problem. This generic opinion fails to relate his
opinion to the specific technology of the ’726 patent or to differing levels of
ordinary skill that Dr. Kazerooni defines in Paragraphs 10 and 39 of his
Declaration.11
Dr. Kazerooni also opines that “[a]ny housing structure in front of the
camera lens would necessarily taper outward from the camera in a ‘wedge’ shape
so that the field of view from the lens would not be obstructed by the housing that
secures the lens and the camera.” Id. ¶ 64. Again, Dr. Kazerooni does not provide

11 In Paragraph 10, Dr. Kazerooni states that a person having ordinary skill in the
art (“PHOSITA”) “would have had at least the qualifications of or equivalent to an
undergraduate degree in mechanical engineering with at least two years of work
adapting computer vision systems for mounting in automobiles.” Ex. 1008 ¶ 10
(emphasis added). In paragraph 39, Dr. Kazerooni states different qualifications,
opining that a PHOSITA “would have had at least the qualifications of or
equivalent to either [an] 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.” Id.
¶ 39 (emphasis added).
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any facts, data, or analysis to support this opinion. Declarations expressing an
opinion of an expert must disclose the underlying facts or data upon which the
opinion is based. 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the
underlying facts or data on which the opinion is based is entitled to little or no
weight.”). In fact, Kakinami appears to disclose a housing in Figure 2a that does
not include a wedge shape. Instead, Dr. Kazerooni states that the wedge-shaped
recess is formed by a separate boot 18 that is connected to the end of an arm 11 of
the housing. Ex. 1008 ¶ 50. Kakinami discloses that boot 18 defines a closed
chamber with the windshield 3 in order to isolate camera 20 from the outside
atmosphere and the inside atmosphere of the automobile and boot 18 includes an
opening 19 through which air can pass. Ex. 1005, 2:39–49; Fig. 2a.
It also is unclear exactly what features of Kakinami and Kuehnle are being
combined with Ponziana and in what manner. It is unclear whether Dr. Kazerooni
is combining teachings and features of both Kakinami and Kuehnle with Ponziana
in some unspecified manner, or whether Dr. Kazerooni is applying teachings and
features of Kakinami or Kuehnle alternatively with Ponziana in some unspecified
manner. The lack of clarity in the manner in which Dr. Kazerooni is combining
features and teachings of Ponziana, Kakinami, and Kuehnle makes Dr. Kazerooni’s
Declaration of very limited probative value. Nor has Dr. Kazerooni provided
adequate reasoning supported by rational underpinning for combining the various
teachings and features of the prior art to render obvious the claimed subject matter.
e. The Challenged Dependent Claims
Our analysis above addresses independent claims 1, 28, 33, 40 and 47 and
determines, for purposes of this proceeding, that the information in the Petition
does not show sufficiently that these claims are unpatentable. The remaining
challenged claims depend from one of the independent claims. Petitioner does not
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provide persuasive additional arguments or additional evidence directed to the
dependent claims that cures the deficiencies discussed above concerning the
independent claims.
III. CONCLUSION
For the foregoing reasons, based on the information presented in the
Petition, we determine that Petitioner has not demonstrated a reasonable likelihood
that it would prevail in establishing that any of claims 1, 6, 7, 9–14, 16–18, 28–30,
33, 37–42, 45–49, 52–60, and 65 of the ’726 patent are unpatentable. Accordingly,
we deny the Petition and do not institute an inter partes review of claims 1, 6, 7, 9–
14, 16–18, 28–30, 33, 37–42, 45–49, 52–60, and 65 of the ’726 patent.
IV. ORDER
For the reasons given, it is
ORDERED that the Petition challenging the patentability of claims 1, 6, 7,
9–14, 16–18, 28–30, 33, 37–42, 45–49, 52–60, and 65 of U.S. Patent No.
8,405,726 B2 is denied.

bar

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FOR PETITIONER:

A. Justin Poplin
Josh C. Snider
Timothy K. Sendek
Allan Sternstein
LATHROP & GAGE LLP
jpoplin@lathropgage.com
patent@lathropgage.com
tsendek@lathropgage.com
ASternstein@lathropgage.com

FOR 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