Valeo North America, Inc.v.Magna Electronics Inc.

Patent Trial and Appeal Board

Dec 7, 2015

13621382 (P.T.A.B. Dec. 7, 2015)

Trials@uspto.gov Paper 10
571-272-7822 Entered: December 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VALEO NORTH AMERICA, INC.; VALEO S.A;
VALEO GmbH; VALEO SCHALTER UND SENSOREN GmbH;
and CONNAUGHT ELECTRONICS LTD.,
Petitioner,

v.

MAGNA ELECTRONICS, INC.,
Patent Owner.
____________

Case IPR2015-01415
Patent 8,543,330 B2
____________

Before RICHARD E. RICE, JAMES A. TARTAL, and
BARBARA A. PARVIS, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

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

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Petitioner, Valeo North America, Inc., Valeo S.A., Valeo GmbH,
Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd., filed a
corrected Petition requesting an inter partes review of claims 8, 11, 12, 16,
17, 19–21, 28, 31–38, 42, 50, 51, 53, 54, 62, 70, 71, 73, 74, 79, and 84 of
U.S. Patent No. 8,543,330 B2 (“the ’330 patent”). Paper 7 (“Pet.”). Patent
Owner, Magna Electronics, Inc., filed a Preliminary Response. Paper 9
(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which
provides that an inter partes review may not be instituted “unless . . . the
information presented in the petition . . . 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.”
Petitioner previously sought institution of an inter partes review of
claims 1–89 of the ’330 patent. Valeo North America, Inc., Valeo S.A.,
Valeo GmbH, Valeo Schalter und Sensoren GmbH, and Connaught
Electronics Ltd. v. Magna Electronics, Inc., Case IPR2015-00250
(“IPR2015-00250”), Paper 1(“the 250-Petition”). We instituted trial in
IPR2015-00250 on claims 1–7, 9, 10, 13–15, 18, 22–27, 29, 30, 39–41, 43–
49, 52, 55–61, 63–69, 72, 75–78, 80–83, and 85–89 of the ’330 patent, but
further determined that the information presented by Petitioner failed to
demonstrate a reasonable likelihood that Petitioner would prevail in showing
the unpatentability of claims 8, 11, 12, 16, 17, 19–21, 28, 31–38, 42, 50, 51,
53, 54, 62, 70, 71, 73, 74, 79, and 84. IPR2015-00250, Paper 7 (“the 250-
Decision”). Petitioner did not request rehearing in IPR2015-00250 of our
decision to deny institution of trial for claims 8, 11, 12, 16, 17, 19–21, 28,
31–38, 42, 50, 51, 53, 54, 62, 70, 71, 73, 74, 79, and 84 of the ’330 patent.
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Petitioner subsequently filed the instant Petition challenging the
patentability of each claim that was denied review in IPR2015-00250. For
the reasons below, based on the circumstances of this case, we exercise our
discretion under 35 U.S.C. § 325(d) to deny the Petition and, therefore,
decline to institute inter partes review.
I. BACKGROUND
A. The ’330 Patent (Ex. 1001)
The ’330 patent, titled “Driver Assist System for Vehicle,” issued
September 24, 2013, from U.S. Application No. 13/621,382, filed September
17, 2012. Ex. 1001. Petitioner contends the earliest effective filing date of
the ’330 patent is January 22, 2002. Pet. 13–16. The ’330 patent is directed
to a system for a vehicle, including a camera with an exterior field of view
and a video display operable to display image data captured by the camera to
the driver of the vehicle. Ex. 1001, Abstract. The system is operable to
detect objects in the exterior field of view and to provide a visual alert and
an audible alert responsive to detection of an object exterior of the vehicle.
Id.
B. Illustrative Claim
Claims 1, 39, 59, and 76 of the ’330 patent are independent. Claims
2–38 ultimately depend from claim 1, claims 40–58 ultimately depend from
claim 39, claims 60–75 ultimately depend from claim 59, and claims 77–89
ultimately depend from claim 76. Claim 1 of the ’330 patent is illustrative
of the claims at issue:
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1. A driver assist system for a vehicle, said driver assist
system comprising:
a rearward facing camera disposed at a vehicle equipped
with said driver assist system and having a rearward field
of view relative to the equipped vehicle;
a video display viewable by a driver of the equipped
vehicle when normally operating the equipped vehicle,
wherein said video display is operable to display image
data captured by said rearward facing camera;
wherein said driver assist system is operable to detect
objects present in said rearward field of view of said
rearward facing camera
wherein said driver assist system is operable to provide a
display intensity of said displayed image data of at least
about 200 candelas/sq. meter for viewing by the driver of
the equipped vehicle;
wherein said driver assist system is operable to provide a
visual alert to the driver of the equipped vehicle respon-
sive to detection of an object rearward of the equipped
vehicle during a reversing maneuver of the equipped
vehicle;
wherein said driver assist system is operable to provide an
audible alert to the driver of the equipped vehicle
responsive to detection of an object rearward of the
equipped vehicle during a reversing maneuver of the
equipped vehicle; and
wherein said visual alert comprises electronically gener-
ated indicia that overlay said image data displayed by
said video display, and wherein said electronically gen-
erated indicia at least one of (i) indicate distance to a
detected object rearward of the equipped vehicle and (ii)
highlight a detected object rearward of the equipped
vehicle.

Ex. 1001, 31:47–32:12.
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C. Related Proceedings
Petitioner states that the ’330 patent is a subject of the following civil
action: Magna Electronics Inc. v. Valeo, Inc., No. 2:14-cv-10540 (E.D.
Mich.). Pet. 2.
D. Asserted Grounds of Unpatentability
The table below compares the combinations of references Petitioner
asserted against claims 8, 11, 12, 16, 17, 19–21, 28, 31–38, 42, 50, 51, 53,
54, 62, 70, 71, 73, 74, 79, and 84 under 35 U.S.C. § 103(a) in
IPR2015-00250, for which institution was denied, to the combinations
Petitioner asserts in this proceeding:
Challenged
Claim(s)
References Asserted in
IPR2015-00250
References Asserted in
IPR2015-01415
(New References in Bold)
8, 11, 12, 16,
17, 50, 51, 53,
54, 70, 71, 73,
74, and 84
Lemelson,1 Schofield,2 and
Tokito3
Lemelson, Schofield,
Tokito, and Okada4

1 U.S. Patent No. 6,553,130 B1 (“Lemelson,” Ex. 1005), issued
April 22, 2003, from an application filed June 28, 1996.
2 U.S. Patent No. 5,670,935 (“Schofield,” Ex. 1007), issued
September 23, 1997, from an application filed May 22, 1995.
3 U.S. Patent No. 6,259,423 B1 (“Tokito,” Ex. 1006), issued July 10, 2001,
from an application filed August 17, 1998. Petitioner misidentifies Tokito as
U.S. Patent No. 6,226,061 in the Petition, which we understand to be an
inadvertent mistake in light of the content of Exhibit 1006. See Pet. 9.
4 EP 1 170 173 A2 (“Okada,” Ex. 1014), published January 9, 2002.
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Challenged
Claim(s)
References Asserted in
IPR2015-00250
References Asserted in
IPR2015-01415
(New References in Bold)
19
Lemelson, Schofield,
Tokito, Kajimoto,5 and
(He6 or Liu7)
Lemelson, Schofield,
Tokito, Kajimoto, and
Millikan8
20
Lemelson, Schofield,
Tokito, Kajimoto, and
He
Lemelson, Schofield,
Tokito, Kajimoto,
He, and Millikan
21 Lemelson, Schofield,
Tokito, Kajimoto, and Liu
Lemelson, Schofield,
Tokito, Kajimoto, Liu,
and Millikan
28 Lemelson, Schofield,
Tokito, Schaefer,9 and
Secor10
Lemelson, Schofield,
Tokito, Schaefer,
Secor, and DeVries11
31–33 Lemelson, Schofield,
Tokito, and Hsu12
Lemelson, Schofield,
Tokito, Hsu, and Breed13
34–38 Lemelson, Schofield, and
Tokito
Lemelson, Schofield,
Tokito, and Turnbull14

5 U.S. Patent No. 5,920,367 (“Kajimoto,” Ex. 1009), issued July 6, 1999,
from an application filed October 10, 1997.
6 U.S. Patent No. 6,359,392 B1 (“He,” Ex. 1010), issued March 19, 2002,
from an application filed January 4, 2001.
7 U.S. Patent No. 6,593,011 B2 (“Liu,” Ex. 1011), issued July 15, 2003,
from an application filed July 24, 2001.
8 U.S. Patent No. 5,883,684 (“Millikan,” Ex. 1016), issued March 16, 1999.
9 U.S. Patent No. 4,731,769 (“Schaefer,” Ex. 1008), issued March 15, 1988,
from an application filed April 14, 1986.
10 U.S. Patent No. 5,289,321 (“Secor,” Ex. 1012), issued February 22, 1994.
11 U.S. Patent No. 6,158,655 (“DeVries,” Ex. 1017), issued December 12,
2000.
12 U.S. Patent No. 6,100,811 (“Hsu,” Ex. 1013), issued August 8, 2000,
from an application filed December 22, 1997.
13 U.S. Patent App. No. 2001/0002451 A1 (“Breed,” Ex. 1018) published
May 31, 2001.
14 WO 01/080353 A1 (“Turnbull,” Ex. 1015), published October 25, 2001.
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Challenged
Claim(s)
References Asserted in
IPR2015-00250
References Asserted in
IPR2015-01415
(New References in Bold)
42, 62, 79 Lemelson, Schofield, and
Tokito
Lemelson, Schofield,
Tokito, Okada, and
Shimizu15

II. ANALYSIS
In determining whether to institute inter partes review, we may “deny
some or all grounds for unpatentability for some or all of the challenged
claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a). Our discretionary
determination of whether to institute review is guided by 35 U.S.C. § 325(d),
which states, in relevant part, that “[i]n determining whether to institute or
order a proceeding under this chapter, chapter 30, or chapter 31, the Director
may take into account whether, and reject the petition or request because, the
same or substantially the same prior art or arguments previously were
presented to the Office (emphasis added).”16
As shown in the table above, Petitioner’s second attempt to challenge
claims 8, 11, 12, 16, 17, 19–21, 28, 31–38, 42, 50, 51, 53, 54, 62, 70, 71, 73,
74, 79, and 84 of the ’330 patent as obvious relies on the identical references
Petitioner asserted in the 250-Petition, with the addition of a single new
reference for each of the prior challenges other than for claim 19 (for which
Millikan is added in place of He or Liu), and claims 42, 62, and 79 (for
which two new references are added). In the 250-Petition, Petitioner

15 EP 1 065 642 A2 (“Shimizu,” Ex. 1026), published January 3, 2001.
16 Chapter 31 of the Patent Act covers inter partes review proceedings.
Thus, although § 325(d) appears in Chapter 32, which is directed to post-
grant reviews, it is applicable to inter partes reviews.
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asserted that “[b]ut for the fact that the Challenged Claims recite a few
essentially trivial matters of design choice that were well known by January
2002, and/or features already known as being desirably incorporated into
automobiles, they would all be anticipated by Lemelson, which disclosed
virtually the entirety of the claimed inventions years earlier.” 250-Petition,
20–21.
According to Petitioner, Okada has been added with respect to audible
alerts Petitioner previously argued in IPR2015-00250 were disclosed by
Lemelson, because Okada is “more robust in certain important respects.”
Pet. 5. Petitioner does not identify what important respects are being
referred to, or otherwise explain why Okada is more robust. Petitioner also
relies on Millikan “to demonstrate that the number of LEDs used to
backlight an LCD panel was a routine matter of design choice at the time of
the invention of the ’330 patent, and that it was known that a plurality of
LEDs may be used when the other components of the LCD display so
require, in order to avoid ‘undesirable dark spots.’” Id. Petitioner also states
that it relies on Breed as disclosing a weight or “biometric characteristic,”
Shimizu as disclosing displaying distances from the rear end of a vehicle,
DeVries as disclosing a rearview mirror incorporating a “video display” and
a “touch sensitive input,” and Turnbull as disclosing state of the art systems
circa 2000. Id. at 5–7. Petitioner also asserts that a majority of the newly
cited references were not considered during prosecution of the ’330 patent.
Id. at 7.
Rather than identify new arguments based on additional references,
Petitioner instead makes the identical argument presented in the 250-
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Petition, asserting once again that “[b]ut for the fact that the Challenged
Claims recite a few essentially trivial matters of design choice that were well
known by January 2002, and/or features already known as being desirably
incorporated into automobiles, they would all be anticipated by Lemelson,
which disclosed virtually the entirety of the claimed inventions years
earlier.” Pet. 22. It is not apparent from the Petition that the additional
references provided by Petitioner are necessary to Petitioner’s grounds. For
example, with respect to claims 42, 62, and 79, Petitioner states that “[t]o the
extent a more explicit disclosure could possibly be required, Shimizu
describes a vehicle drive assist system that displays ‘distance lines’ to
provide easy recognition of distances between the rear end of the vehicle and
obstructive objects when traveling backwards in a vehicle.” Id. at 39.
Similarly, Petitioner argues with respect to claims 19, 20, and 21, that “if
using one LED is clear from Kajimoto, and it is, then using more than one
LED to backlight a device would be obvious and is nothing more than an
engineering choice based on a specific application.” Id. at 51. Nevertheless,
Petitioner introduces a new reference, Millikan, as disclosing this feature
even though Petitioner asserts it would have been obvious from Kajimoto,
the reference relied upon by Petitioner in IPR2015-00250. Id. Typically an
obviousness ground based on the addition of superfluous or redundant
references to previously asserted references raises substantially the same
prior art and arguments previously asserted.
Petitioner also makes several broad assertions to differentiate its new
allegations from its prior petition, including that the Petition “presents for
the first time new arguments, additional prior art references, and
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combinations [which]could not have been presented previously, based on the
results of prior art searches previously performed and/or interpretations of
those references then-available to Petitioner.” Pet. 4–5. Petitioner, however,
offers no evidence in support of its contention that the arguments raised in
this proceeding “could not have been presented previously.” To the
contrary, as noted above, Petitioner makes the same argument in both cases
that Lemelson discloses “virtually the entirety of the claimed inventions
years earlier.”
On multiple occasions the Board has recognized that an allegation of
obviousness in a second petition may be based upon “substantially the same”
prior art and arguments previously presented to the Office in an earlier
petition, within the meaning of 35 U.S.C. § 325(d), even if the second
petition includes prior art not asserted in the prior petition. See Customplay,
LLC, v. Clearplay, Inc., IPR2014-00783, slip op. at 11–13 (PTAB Nov. 7,
2014) (Paper 9) (exercising § 325(d) discretion to decline to institute trial
when ground presented in second petition presents substantially same prior
art and arguments as prior petition despite addition of prior art); Unilever,
Inc. v. The Proctor & Gamble Co., IPR2014-00506 (PTAB July 7, 2014)
(Paper 17) (same); Medtronic, Inc. v. Robert Bosh Healthcare Sys., Inc.,
IPR2014-00436, slip op. at 11–12 (PTAB June 19, 2014) (Paper 17) (same).
In this case, as explained above, Petitioner contends the additional
references do no more than support Petitioner’s prior contention that certain
features of the challenged claims are a matter of design choice or were
already known as being desirably incorporated into automobiles. Thus,
despite Petitioner’s addition of Okada, Millikan, DeVries, Breed, Turnbull,
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and Shimizu to the obviousness grounds previously asserted in
IPR2015-00250, Petitioner’s grounds in this proceeding present substantially
the same art, and substantially the same arguments, as previously asserted by
Petitioner in IPR2015-00250.
Finally, we take into consideration the fact that the Petition was filed
after our decision denying institution of review of the same challenged
claims was entered in IPR2015-00250, and that it seeks to correct
deficiencies with the prior petition identified in our denial of those prior
grounds. Such a consideration is a factor which weighs against institution of
a second petition. See ZTE Corp. v. ContentGuard Holdings Inc., IPR2013-
00454, slip op. at 5–6 (PTAB. Sept. 25, 2013) (Paper 12) (“A decision to
institute review on some claims should not act as an entry ticket, and a how-
to guide, for the same Petitioner . . . for filing a second petition to challenge
those claims which it unsuccessfully challenged in the first petition.”);
Butamax Advanced Biofuels LLC v. Gevo, Inc., Case IPR2014-00581, slip
op. 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“Allowing similar, serial
challenges to the same patent, by the same petitioner, risks harassment of
patent owners and frustration of Congress’s intent in enacting the Leahy-
Smith America Invents Act.”); see also 37 C.F.R. § 42.1(b) (patent rules
promulgated for AIA post-grant proceedings, including those pertaining to
institution, are “construed to secure the just, speedy, and inexpensive
resolution of every proceeding.”); 35 U.S.C. § 316(b) (regulations for AIA
post-grant proceedings take into account “the efficient administration of the
Office” and “the ability of the Office to timely complete [instituted]
proceedings”).
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Accordingly, we exercise our discretion under 35 U.S.C. § 325(d) to
deny institution of review.
III. CONCLUSION
For the foregoing reasons, based on the circumstances of this case, we
exercise our discretion under 35 U.S.C. § 325(d), and deny the Petition
requesting institution of inter partes review of claims 8, 11, 12, 16, 17, 19–
21, 28, 31–38, 42, 50, 51, 53, 54, 62, 70, 71, 73, 74, 79, and 84 of the ’330
patent.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to claims 8, 11, 12, 16, 17,
19–21, 28, 31–38, 42, 50, 51, 53, 54, 62, 70, 71, 73, 74, 79, and 84 of the
’330 patent.

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PETITIONER:
Tammy J. Terry
terry@oshaliang.com

Seema Mehta
mehta@oshaliang.com

Peter C. Schecter
schechter@oshaliang.com

PATENT OWNER:
David K.S. Cornwell
davidc-PTAB@skgf.com

Salvador M. Bezos
sbezos-PTAB@skgf.com

Timothy A. Flory
Flory@glbf.com

Terence J. Linn
linn@glbf.com