• TRW Automotive US LLC v. Magna Electronics Inc.Rehearing denied
  PTAB · Aug 27, 2014 · IPR2014-00294 · APJ Frances L Ippolito · IPR · Rehearing

  The Board denied TRW’s rehearing request, leaving in place the denial of institution on claims 34, 39–48, and 50–54 because the Petition did not show a reasonable likelihood of prevailing.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached

    “claim 50 and its dependent claims 51 and 53 because the Petition’s analysis of certain “control” limitations did not include a sufficient reason for why one of ordinary skill in the art would have combined Yanagawa’s alleged teaching with Bottesch or Vellacott. Decision 30. In the Request for Rehearing, Petitioner contends that (1) the Petition states Bottesch teaches use of “any other photo sensitive device,” and (2) Yanagawa describes a vehicle recognition device capable of automatically controlling headlights, which is different from the other applied references “only in the choice of which vehicle system to control.” Req. Reh’g 5. Petitioner maintains that this is sufficient to show that Yanagawa is a “suitable equivalent for the particular photosensor arrays embodiments of Bottesch.” Id. (citing Pet. 18). We are not persuaded because these arguments were not presented in the Petition for the “control” limitations. For example, we agree that Bottesch states that any photo sensitive device, such as CCDs, may be used with its vehicle system (Pet. 17); however, we are unpersuaded that Petitioner presented this reasoning for the combination of Bottesch with other references as teaching the specific “control” limitations discussed on pages 31 and 32 of the Petition. On those pages, the Petition’s analysis does not include any reason for combining the applied references. Pet. 31–32. Although Petitioner may have intended for us to mix and match features among those disclosed in the references and rely on other portions of the Petition for a reason to combine, we were unable to discern such an intent from the wording and structure of pages 31–32 of the Petition. Moreover, in coming to our conclusion, we considered the Petition’s arguments that portions of Yanagawa’s system may be substituted for portions of Bottesch; however, we found these arguments unpersuasive. Decision 30. Thus, Petitioner’s contention is merely a disagreement with our decision. Disagreement with the decision is not a sufficient basis on which to request rehearing.” slip op. at 5

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner contends the Decision constitutes an abuse of discretion because it “summarily dismiss[es] the expert declaration of Dr. Miller.” Req. Reh’g 11. Petitioner further asserts that the Petition need “offer nothing more” than Dr. Miller’s suggestion that “the claimed invention is nothing more than a combination of familiar elements doing what one in the art would expect them to do.” Id. at 12. We did not overlook the testimony of Dr. Miller cited by Petitioner in the Petition. We considered the evidence and argument presented in the Petition, but found that the cited portions Dr. Miller’s declaration repeated the same unpersuasive conclusory statements presented in the Petition for combining Bottesch, Yanagawa, Vellacott, and Zheng. Decision 17 n.4. Thus, Petitioner’s contention is merely a disagreement with our decision, which is not a sufficient basis for a rehearing.” slip op. at 10

  § 103 obviousness
  Patents in suitUS 8,314,689

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.