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

Patent Trial and Appeal Board

Jul 31, 2014

09135565 (P.T.A.B. Jul. 31, 2014)

Trials@uspto.gov Paper 18
571-272-7822 Entered: July 31, 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 IPR2014-00251
Patent 6,097,023

Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION
Petitioner’s Request for Rehearing
37 C.F.R. § 42.71
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Patent 6,097,023

I. INTRODUCTION
Petitioner TRW Automotive US LLC filed a Request for Rehearing (Paper
16, “Req. Reh’g”) of the Decision mailed June 26, 2014 (Paper 14, “Decision”),
which instituted inter partes review of claims 1, 8, 9, 18, 29, 30, 54, 62–64, and 70
of U.S. Patent 6,097,023 (Ex. 1002, “the ’023 patent”). In its request, Petitioner
seeks reconsideration of our decision not to institute inter partes review with
respect to claims 2 and 13 of the ’023 patent. Req. Reh’g 1. The Request for
Rehearing is denied.

II. STANDARD OF REVIEW
In determining whether to institute an inter partes review of a patent, the
Board may “deny some or all grounds for unpatentability for some or all of the
challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on a
petition, the Board will review the decision for an abuse of discretion. 37 C.F.R.
§ 42.71(c). The party requesting rehearing bears the burden of showing an abuse
of discretion, and “[t]he request must specifically identify all matters the party
believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).

III. ANALYSIS
A. Claim 13
Petitioner argues that the Board incorrectly construed the claim 13 phrase
“aim of the vehicle’s headlights” to specifically exclude “switching between low
beams and high beams.” Req. Reh’g 2. Petitioner asserts that the phrase should be
construed, in view of the Specification of the ’023 patent, to include switching
between low beams and high beams, and, if so construed, inter partes review of
claim 13 should be instituted. Id. at 3.
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We initially note that Petitioner concedes that its Petition (Paper 3, “Pet.”)
did not set forth a proposed interpretation for the phrase “aim of the vehicle’s
headlights” (Req. Reh’g 2), and therefore we cannot identify where the Petition
supports the position that this phrase should be construed to include switching
between low beams and high beams. We could not have misapprehended or
overlooked something that was not presented in the Petition. Furthermore, a
request for rehearing is not an opportunity to supplement the initial petition.
Nevertheless, we are not persuaded by Petitioner’s argument that we
incorrectly construed the phrase in question. First, Petitioner’s assertion that our
claim construction specifically excludes “switching between low beams and high
beams” mischaracterizes the interpretation. Petitioner’s assertion appears to be
based on our discussion on page 23 of the Decision regarding Petitioner’s
contention that Yanagawa (Ex. 1004) discloses varying the aim of a vehicle’s
headlights. Req. Reh’g 2. This portion of the Decision stated that the passage of
Yanagawa relied on by Petitioner “merely describes executing ‘tasks,’ such as
‘controlling the headlight beams’ (i.e., switching between low beams and high
beams) or ‘issuing a warning to the driver.’ It does not describe varying the ‘aim
of the vehicle’s headlights,’ as the term is properly construed.” Decision 23. As
such, we did not state that headlight aim cannot be varied by switching between
low beams and high beams. Instead, we stated that Yanagawa describes
“controlling the headlight beams,” but does not describe varying the “aim of the
vehicle’s headlights” specifically.1 Indeed, the Petition does not point to any
portion of Yanagawa that explicitly discloses that switching between low beams

1 Our indication that “controlling the headlight beams” includes switching between
low beams and high beams was based on other portions of Yanagawa. See, e.g.,
Ex. 1004, 3–4 (“in the next step 108, the headlights are controlled to switch the
headlights to low beams”).
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and high beams will vary the aim of the vehicle’s headlights. Nor does the Petition
provide any basis to suggest that Yanagawa inherently or implicitly discloses that
switching between low beams and high beams will vary the aim of the vehicle’s
headlights. Accordingly, we determined that, on the record before us, Petitioner
had not established that Yanagawa discloses varying headlight aim.
Second, Petitioner’s reliance on the Specification of the ’023 patent
conflates the meaning of the phrase “aim of the vehicle’s headlights” with
techniques for varying the aim of a vehicle’s headlights. The passage relied on by
Petitioner states that control of headlamps 18 “may be a binary control of the aim
of the beam, such as by switching between lamps or lamp filaments, or may be a
continuous variation of the aim of a single lamp more or less forward of the
vehicle.” Ex. 1002, 3:44–51. This passage describes (albeit in little detail) two
ways in which the headlight aim can be varied. The passage does not provide a
specific definition for the phrase “aim of the vehicle’s headlights”; nor does it
suggest that the phrase has a meaning other than its ordinary meaning. We did not
misapprehend or overlook this passage in construing the phrase “aim of the
vehicle’s headlights.” Instead, we construed the meaning of the phrase
independent of techniques for varying the aim. Our construction did not include or
exclude any particular way of varying the aim.
For the foregoing reasons, Petitioner has not shown that the Board abused its
discretion in denying the asserted ground of unpatentability of claim 13.

B. Claim 2
Regarding claim 2, Petitioner argues that “the Board failed to appreciate the
evidence of record that in-cab mounting is a matter of equivalent design choice.”
Req. Reh’g 3. Petitioner asserts that this evidence was presented in the analysis of
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claim 1 set forth on pages 30–32 of the Petition.2 Id. at 4. The Board, however,
considered the evidence and argument presented in the Petition but did not find it
persuasive. Decision 25. Petitioner’s argument here is merely disagreement with
the Board’s findings and conclusions. Such disagreement is not a sufficient basis
on which to request rehearing. Nevertheless, we further address Petitioner’s
evidence and argument.
Petitioner first notes that Yanagawa discloses that television camera 11
“may be mounted at any location from which the forward direction of the vehicle
can be imaged.” Req. Reh’g 4; Pet. 30, 32 (quoting Ex. 1004, 5). Petitioner does
not elaborate on this assertion, but, presumably, Petitioner’s point is that although
Yanagawa does not explicitly disclose that television camera 11 is positioned in
the vehicle cabin, the possibility of an in-cabin mounting is not ruled out. The
mere possibility of in-cabin mounting, however, is not sufficient to render the
claimed positioning obvious.
Petitioner also asserts that the ’023 patent “does not disclose any particular
unexpected advantage of placing the headlamp control assembly to view through
the windshield. As such, the selection of a vantage point looking through the
windshield is merely a matter of equivalent design choice.” Req. Reh’g 4; Pet. 30.
The ’023 patent, however, discloses that mounting image sensor 14 within the
interior of the vehicle provides the advantage of “substantially eliminat[ing]
environmental dirt and moisture from fouling the light sensor module.” Ex. 1002,
4:3–7. Petitioner has not explained adequately why, in view of this disclosed
advantage, an in-cab mounting would have been “merely a matter of equivalent
design choice.”

2 The claim 1 analysis was incorporated by reference into the arguments regarding
claim 2. Req. Reh’g 4; Pet. 50.
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In addition, Petitioner asserts that “[m]inor differences between the prior art
and a claimed device may be a matter of design choice absent evidence to the
contrary.” Req. Reh’g 4; Pet. 30, 32 (quoting In re Conte, 36 Fed. App’x 446, 451
(Fed. Cir. 2002) (unpublished) (citing In re Rice, 341 F.2d 309, 314 (CCPA
1965))). Petitioner’s reliance on this quotation from Conte, however, is misplaced
in this instance. First, the quotation merely states that minor differences may be a
matter of design choice absent evidence to the contrary; it does not state that all
minor differences necessarily are matters of design choice absent evidence to the
contrary. Moreover, the Conte quotation is a rephrasing of the conclusion from
Rice that design changes that did not “result in a difference in function or give
unexpected results” were “no more than obvious variations consistent with the
principles known in th[e] art” of the patent at issue in that case. Rice, 341 F.2d at
314. In the present case, Petitioner has not cited persuasive evidence that the ’023
patent’s in-cab mounting—disclosed as providing the advantage of substantially
eliminating environmental dirt and moisture—would not “result in a difference in
function or give unexpected results.”
Lastly, Petitioner argues that the obviousness of claim 1 “is confirmed by the
expert declaration of Jeffrey A. Miller. (1010 at ¶20-21).” Req. Reh’g 4; Pet. 31.
We disagree. Dr. Miller’s declaration (Ex. 1010) merely quotes the same passage
from Yanagawa discussed above regarding the positioning of television camera 11
and then opines, without further support, that the “selection of a vantage point
looking through the windshield is merely a matter of equivalent design choice.”
Ex. 1010 ¶ 21. This analysis does not add to the arguments made in the Petition or
Request for Rehearing, which are not persuasive for the reasons set forth above.
Thus, we are not persuaded that the Board abused its discretion in denying
the asserted ground of unpatentability of claim 2.
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IV. ORDER
Accordingly, it is hereby ORDERED that Petitioner’s Request for Rehearing
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