- TRW Automotive US LLC v. Magna Electronics Inc.All claims unpatentablePTAB · Dec 7, 2015 · IPR2014-01010 · APJ Barry L Grossman · IPR · Final written decision
Claims 6, 7, and 10 are unpatentable under § 103(a) as obvious over Ponziana and Rayner, with Kakinami added for claim 7.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We determine that the patentability of the challenged claims does not depend on whether Petitioner’s or Patent Owner’s asserted definition is used. The differences among the asserted positions are insignificant in resolving the issue of the patentability of the challenged claims. Moreover, the prior art itself reflects an appropriate level of skill and a need for testimony is not shown. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“less” added, to create thereby the word “fastenerless.” The plain and ordinary meaning of the term “fastenerless” means “without a fastener.” Applying this meaning to claim 10, a “fastenerless attachment” is something that detachably mounts accessory module 10 to an attachment member without using a fastener. Petitioner’s assertion that “fastenerless” means a “detachable mount other than a screw” is not supported by the Specification or by a common dictionary definition. We construe the term “fastenerless attachment” in claim 10 to mean an attachment device that does not use a fastener to mount detachably the accessory module. An example of a “fastenerless attachment” is spring clip 400 from the ’687 patent that does not have or use the optional hole or slot 412 in ends 408 and 410 in order to receive a fastener 413 for attaching the respective end to a surface. Ex. 1007, col. 10, ll. 12–19. slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“For a rain sensor mounted on a vehicle windshield, the area to be photographed or sensed may be the windshield itself, as disclosed in Ponziana, or it may be “a larger area,” also as disclosed in Ponziana. Ex. 1004, col. 3, ll. 37–60. For a data recorder as disclosed in Rayner, used to reconstruct events leading up to a vehicle accident, and the accident itself (Ex. 1005, col. 1, ll. 29–41), the area to be photographed or sensed includes preferably “the entire area ahead of the vehicle” (id. at col. 1, ll. 50–55). Rayner also recognizes the need for some “adjustability” to ensure proper orientation of the camera. Ex. 1005, col. 3, ll. 23–27. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Under the correct analysis under § 103(a), “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. In considering the orientation of a camera within an accessory module mounted to a windshield to obtain the desired field of view for the camera, a person of ordinary skill and creativity, that is a person with a degree in engineering and at least two years of relevant experience (Pet. 13–14; PO Resp. 1), would recognize the myriad factors that may affect the orientation of the camera. The angle of the windshield may be substantially raked or angled towards the rear of a vehicle, as in a sports car, or may be substantially vertical, as in a modern bus. The camera may be at 90 degrees to the windshield-facing portion of the module when mounted to a bus windshield, as shown in Ponziana and Rayner, and would be at an angle other than 90 degrees when mounted to the sleek sports car. Both applications compensate for the angle of the windshield to ensure that the field of view of the camera covers the entire area ahead of the vehicle, as disclosed in Rayner, and as recited in claim 6. We find unpersuasive Patent Owner’s assertion” slip op. at 19
- Obviousness (§103) › KSR rationalesMotivation foundUnpatentable
“mounting element 26. Pet. 12, 17–18. As stated in Ponziana, a first mounting element 26 is on windshield 15 (Ex. 1004, col. 3, ll. 11–13), and the accessory module (rain sensor 24) attaches to mounting element 26 by a complementary mounting area 32 on housing 30 (id. at col. 3, ll. 16–20). Thus, the issue is whether the combined teachings of the references would have suggested to a person of ordinary skill that the alternative accessory module mounting elements of either suction cups or Velcro-type hook and pile fasteners, as disclosed in Rayner, should be complementary to the windshield mounting element (i.e., element 26), as disclosed in Ponziana. We determine, based on the reference disclosures, that this combination would have been obvious. Rayner discloses that the fastening devices disclosed are alternatives to other known mounting devices. Ex. 1005, col. 7, ll. 30–37. Among the myriad fastening options available, ranging from adhesives to the more complex structure disclosed in Ponziana, we are persuaded, based on the reference disclosures, that it would have been obvious to a person of ordinary skill and creativity to choose the preferred fastening option. We note that claim 6 recites an interior rearview assembly and a “separate” accessory module. Ex. 1002, col. 53, ll. 10–11 (“an accessory module separate from said interior rearview mirror assembly”). In Ponziana and in the embodiment shown and described with respect to Figure 1 in Rayner, the mirror mount and the module mount are integrated. Figure 2 in Rayner, however, discloses a module mount separate and distinct from a mirror mount. As stated clearly in Rayner, the embodiment in Figure 2 “does not include a mirror or function as a rear-view mirror.” Ex. 1005, col. 7, ll. 4–6. Based on this disclosure, a person of ordinary skill would have appreciated the simplicity of Rayner’s Figure 2 embodiment, which allows for more basic mounting structures, ranging from an adhesive to a Velcro-type attachment, than when the mirror and module use a common mounting system. The Velcro-type hook and pile fastener disclosed in Rayner uses two components, a hook component and a pile component. As suggested by the mounting structure in Ponziana, one mounting component is connected to the windshield; and the second component is connected to the module. By attaching the first component to the second component, the module is attached to the windshield.” slip op. at 21
Patent outcomesUS 7,533,998 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,533,998 - Opower Inc. v. Cleantech Business Solutions, LLCAdverse judgmentPTAB · Nov 25, 2015 · CBM2014-00155 · APJ Karl D Easthom · CBM · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–16 after Patent Owner disclaimed all claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Here, Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–16, all claims involved in this trial. Paper 28. The statutory disclaimer constitutes a request for entry of adverse judgment.1 III. CONCLUSION Entry of judgment against Patent Owner with respect to claims 1–16 of the ’245 patent is appropriate.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“1 During a telephone conference on November 17, 2015, which included counsel for both parties and the panel, counsel for Petitioner stated he did not object to the request for adverse judgment, but requested that the panel issue with this judgment findings of fact and legal determinations arising from papers of record. Petitioner expressed a concern over a potential for duplicated efforts in ongoing reissue proceedings involving the ’245 patent. We exercise our discretion and decline the request to supplement the record. See 37 C.F.R. § 42.73(d) (3) (i) (precluding Patent Owner from obtaining claims that are not “patentably distinct from a finally refused or canceled claim”).” slip op. at 3
NonePatents in suitUS 8,489,245 - L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentablePTAB · Nov 23, 2015 · IPR2014-00836 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–5 and 8 are unpatentable as obvious over the cited combinations of the EFA Manual, Thomas, and, where applicable, Greene or Brigham.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“term “anomaly” is “deviation from the normal or common order, form, or rule.” Dec. on Inst. 7 (citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 54 (1975)); Ex. 3001, 54. The examples provided in the ’856 patent for identifying a voltage anomaly are consistent with this definition. Namely, a spike in the electric field or an increase in the electric field above a threshold would indicate a deviation from the normal order. Ex. 1002, col. 17, ll. 12–19, col. 18, ll. 8–9, col. 19, ll. 62–67, col. 21, ll. 4– 7. Therefore, we determined that the broadest reasonable interpretation of the phrase “identify the voltage anomaly in the electric field” in claim 1 of the ’856 patent is “identify a deviation from a normal voltage in the electric field, including by identifying an electric field that exceeds a threshold, or that rises and peaks above a threshold or background and then falls.” Dec. on Inst. 7. We see no reason now to deviate from that construction.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–27, 42–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1022 ¶¶ 51–55, 65–67. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 52–53; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1022 ¶¶ 104–106; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 54–56; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1022 ¶¶ 109–110; see KSR, 550 U.S. at 416.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1022 ¶¶ 52–53.” slip op. at 22
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner
“could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’856 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23
Patent outcomesUS 8,536,856 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,536,856 - L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentablePTAB · Nov 23, 2015 · IPR2014-00839 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–5 and 8 are unpatentable as obvious over the EFA Manual and Thomas, with Greene also applied to claim 3.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“anomaly in the electric field” in claim 1 of the ’864 patent to mean “detect an electric field that rises and peaks above a threshold or background and then falls.” PO Resp. 53. Patent Owner argues that the claims and written description of the ’864 patent indicate that a voltage anomaly is identified as the sensor moves past the anomaly. Id. at 53–55. Therefore, according to Patent Owner, an anomaly is represented by a rise in the electric field as the sensor moves closer to the anomaly, a peak when the sensor is near the anomaly, and a fall when the sensor moves past the anomaly. Id. In the Decision on Institution, we determined that Patent Owner’s proposed construction would improperly limit the claims to just one of the examples disclosed in the Specification, and we see no reason now to deviate from that determination. Dec. on Inst. 6 (citing Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007)). Specifically, the ’864 patent states that an anomaly can be “represented for example by a rise-peak-fall in the alert pitch, a corresponding visual spike in raw voltage plot 1206, a high signal strength value in signal strength display field 1322 or a combination thereof.” Ex. 1001, col. 19, ll. 18–23 (emphasis added). Thus, the ’864 patent indicates that a rise-peak-fall in the audible alert or a visual spike are just examples of ways to identify an anomaly. The ’864 patent states that a voltage anomaly also can be identified by an electric field that exceeds a threshold or a high signal strength value. Id. at col. 16, ll. 36–43, col. 17, ll. 31–32, col. 19, ll. 18–23, col. 20, ll. 27–30.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“2. mobile Patent Owner proposes construing the term “mobile” in claim 1 of the ’864 patent to mean “designed to operate while in motion.” Prelim. Resp. 5; PO Resp. 57. Patent Owner argues that the written description of the ’864 patent supports this construction because it states that “the sensor system 100 may detect an energized manhole cover . . . when moving at speeds of up to 10 mph.” Prelim. Resp. 6; Ex. 1001, col. 10, ll. 42–48. We agree that the written description indicates that a mobile apparatus operates while in motion, but Patent Owner does not identify specific evidence showing that a mobile apparatus must be “designed” to operate in motion. Prelim. Resp. 5– 7; PO Resp. 57. Therefore, we determine that the broadest reasonable interpretation of the term “mobile apparatus” in claim 1 of the ’864 patent is “apparatus that operates while in motion.”” slip op. at 8
- Skill levelOther
“a. Level of Ordinary Skill in the Art Patent Owner argues that a person of ordinary skill in the art would not have combined the cited teachings of the EFA Manual and Thomas because it was not known at the time of filing of the ’864 patent that an electric field sensor could be used to identify a stray voltage anomaly. PO Resp. 13–16. Patent Owner’s argument is not persuasive. Patent Owner’s declarant, Dr. Fugate, admits that a person of ordinary skill in the art at the time of filing of the ’864 patent would have known that an electric field sensor could be used to identify a stray voltage anomaly. Ex. 1024, 126:10– 127:1; Tr. 61:4–7. Further, as discussed above, Thomas teaches that electric current flowing through an object generates an anomaly in an electric field, and, thus, it would have been obvious to one of ordinary skill in the art reading Thomas that an electric field sensor could be used to identify a stray voltage anomaly. See supra Section II.B.2; Pet. 38–41; Ex. 1005, col. 7, ll. 6–10; Ex. 1021 ¶¶ 75, 76. Patent Owner also argues that “Petitioners’ sole reason for combining the EFA Manual and Thomas relies solely on the false premise that a skilled artisan would have known about the private Sarnoff experiments on stray voltage detection using electric fields,” but “Petitioners failed to show that the skilled artisan would have known about this work.” PO Resp. 16. Patent Owner’s argument is not persuasive. Thomas teaches mounting an electric field sensor on a motor vehicle and using the sensor to identify anomalies in electric fields while the vehicle is in motion. Ex. 1005, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. As such, Thomas itself would have provided one of ordinary skill in the art with a reason to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas and use the sensor to identify anomalies in electric fields while the vehicle is in motion. Pet. 24– 28, 38–41; Ex. 1021 ¶¶ 49–53, 55–58. Therefore, Petitioner’s reason for combining the cited teachings of the EFA Manual and Thomas is not dependent on whether one of ordinary skill in the art would have known about any private Sarnoff experiments.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. Reasons for Combinations Petitioner identifies evidence indicating that it would have been obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–28, 38–41; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1021 ¶¶ 49–53, 55–58. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 48–49; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1021 ¶¶ 89–91; see KSR, 550 U.S. at 416.” slip op. at 15
Patent outcomesUS 8,598,864 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,598,864 - L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentablePTAB · Nov 23, 2015 · IPR2014-00834 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–5 and 8 are unpatentable as obvious under § 103(a) over the specified combinations of the EFA Manual, Thomas, and, for dependent claims, Greene or Brigham.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“proposed construction is not the broadest reasonable interpretation, and we see no reason now to deviate from that determination. Dec. on Inst. 5–6. Specifically, the word “unexpected” in Petitioner’s proposed construction is not found anywhere in the claims or the written description of the ’274 patent, and we are not persuaded that the word “unexpected” is synonymous with “undesirable” or “dangerous.” Further, Petitioner does not explain how any of the cited portions of the prosecution history show that the “voltage anomaly” recited in claim 1 is an unexpected voltage. Pet. 15–17.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 25–28, 43–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1023 ¶¶ 51–55, 64–66. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 53–54; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1023 ¶¶ 100–102; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 55–57; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1023 ¶¶ 105–106; see KSR, 550 U.S. at 416.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1023 ¶¶ 52–53.” slip op. at 22
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner
“could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’274 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23
Patent outcomesUS 8,482,274 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,482,274 - TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentablePTAB · Nov 19, 2015 · IPR2014-01355 · APJ James P Calve · IPR · Final written decision
Claims 58–76, 78–80, and 82–86 were not shown unpatentable because the proposed combinations did not establish a reason to extend the frit layer beyond the mount and add a camera opening.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“footprint of an accessory in Figure 2C and Figures 3A–3E. Opaque layer 40 extends beyond where storage compartment 42 and outer wall 52 attach to inner surface 30 of window panel 28. However, Carter extends frit layer 40 from top wall 48 of storage compartment 42 only to gasket/grommet 36 at peripheral edge 34 of upper window panel 28. See id. at 3:59–61, Fig. 2C. Carter does not extend frit layer 40 to the front windshield. Thus, we are not persuaded that this teaching would have motivated a skilled artisan to extend a frit layer beyond the footprint of Blank’s mounting button 70 or mount 44 at windshield 22. The issue is not whether a skilled artisan could extend a frit layer beyond an attachment point or whether it would have been trivial to do so. See Pet. Reply 23. The issue is whether a skilled artisan would have been motivated to do so based on teachings of the references; 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 15
- Expert testimonyOther
“of accessories from exterior view, the frit coating “conforms substantially to the regions of the window panel which receive the accessory [which] is referred to as the footprint of the accessory.” Ex. 1007, 8:33–38 (emphasis added). As shown in Figures 4A, 4C, 5A, and 5C of Carter, reproduced above, frit layers 108, 170 conceal storage compartments 102, 162 where those accessories attach to window panels 106, 166. Id. at 6:57–67, 7:6–22, 7:59–8:5; Ex. 1016 ¶ 28. Frit layers 108, 170 conform to “footprints” where accessories 102, 162 attach to window panel 106, 166. Ex. 1016 ¶¶ 28, 29.” slip op. at 15
Patent outcomesUS 8,481,916 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 8,481,916 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Some claims unpatentablePTAB · Nov 16, 2015 · IPR2014-01351 · APJ James P Calve · IPR · Final written decision
Claims 60, 61, 70–74, and 77 are unpatentable as obvious over Blank, Kakinami, and Schofield; the other challenged claims were not shown unpatentable.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Nranian testifies that the proposed modification would require substantial reconstruction or a redesign of Blank or a change in the principle of operation. Ex. 2005 ¶¶ 106–110. Dr. Nranian does not elaborate on this opinion or explain what redesigns and reconstructions would be required. We find persuasive the testimony of Dr. Kazerooni that designing a housing to hold components therein is a basic engineering concept within the level of ordinary skill in the art, particularly in view of, and as evidenced by, the disclosures of Blank and Schofield. Ex. 1016 ¶¶ 21–23. Blank discloses that circuit board 150 may be configured for a supplemental vision system. Ex. 1005, 7:51–59. TRW proposes to use this principle of operation and include Kakinami’s camera with Blank’s module 26. Pet. Reply 15–17. As discussed above, Blank and Schofield disclose reconfiguration and redesign of accessory housings, both internally and externally, to accommodate a variety of different accessories. Ex. 1005, 3:8–11, 7:6–10; Ex. 1006, 9:24– 36. Kakinami also discloses mounting of video camera 20, which includes lens 14, video device 15, and signal processing unit 16. Ex. 1010, 2:15–26, Fig. 2a. Physical incorporation is not required to demonstrate obviousness. See In re Yamamoto, 740 F.2d at 1573.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“sophistication of the technology, all as addressed herein, it is submitted that the person of ordinary skill in the art of the ’590 Patent at the time of the invention would have had at least the qualifications of or equivalent to either a 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. Ex. 1012 ¶ 30. This discussion appears in Dr. Kazerooni’s Declaration in a section entitled “LEVEL OF ORDINARY SKILL.” Ex. 1012 ¶¶ 29–30. This definition of a skilled artisan in paragraph 30 immediately precedes Dr. Kazerooni’s discussion of the “STATE OF THE ART IN THE RELEVANT TIMEFRAME.” See id. ¶¶ 31–48. This definition of a skilled artisan in paragraph 30 of Dr. Kazerooni’s Declaration matches TRW’s definition of a skilled artisan in the Petition and is cited as the basis of TRW’s definition of a skilled artisan. See Pet. 17 (citing Ex. 1012 ¶¶ 29–30); Ex. 1012 ¶ 30. Another definition of a skilled artisan appears in Dr. Kazerooni’s Declaration in a section entitled “SUMMARY OF OPINIONS.” Ex. 1012 ¶ 10. It is unclear what use, if any, is made of this definition. Accordingly, we understand TRW and Dr. Kazerooni to assert the same definition of a skilled artisan, which definition appears at page 17 of the Petition and paragraph 30 of Dr. Kazerooni’s Declaration. Dr. Kazerooni identifies November 4, 1999 as the priority date of the ’590 patent invention. Ex. 1012 ¶ 26. Magna does not dispute this date. PO Resp. 57. Dr. Kazerooni testifies to the level of ordinary skill at the time of the invention. Id. ¶ 30. Dr. Kazerooni provides a detailed discussion of the state of the art at the time of the invention by discussing the disclosures of Blank, Kakinami, Schofield, Carter, Anderson, and Klappenbach. Id. ¶¶ 31– 48. These references were filed and issued before November 4, 1999. TRW” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We interpret “bus communication” as “information transferred over a set of signal lines between devices connected to the signal lines.” We are not persuaded that a bus must include an interface. The IEEE Standard 969 Interface Devices (Ex. 1004) defines a bus in that context. The’590 patent discloses a CAN bus without disclosing an interface. Ex. 1002, 4:15–17. An ordinary meaning of “bus” includes “[a] set of signal lines to which a number of devices are connected and over which information is transferred between them.” See ANSI/IEEE Standard 1196-1987 IEEE Standard for a Simple 32-Bit Backplane Bus: NuBus (Ex. 3001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We construe “cluster of individual sensors” as “a group of individual sensors or components of individual sensors positioned close together.” Pet. 6–7; Prelim. Resp. 11–12. This interpretation is consistent with an ordinary meaning of “cluster” which includes “a group of things or people that are close together” (Pet. 6) and the claims, which recite “a cluster of individual sensors resides on or near said in-cabin surface of said windshield.” This interpretation is consistent with the ’590 patent specification, which discloses that housing 10 is divided by wall 16 into adjacent first and second compartments 18, 20. Ex. 1002, 3:29–31, Fig. 2. One embodiment contains rain sensor 26 in first compartment 18 and printed circuit board 30 bearing a compass sensor 30 in second compartment 20. Id. at 5:62–6:12, 7:52–55, Figs. 2, 8. The ’590 patent specification discloses that the housing may accommodate a plurality of electrical accessories. Id. at 6:42–44. The ’590 patent further discloses that component 30 “can be any of a number of sensors or circuits which can be made small enough to fit in the compartment 20.” Id. at 7:64–67 (emphasis added). Preferably, component 30 is provided as a unitary module received in compartment 20. Id. at 7:67– 8:1. An ordinary meaning of “any” is one or more. Thus, the ’590 patent specification discloses that component 30 may include more than one sensor.” slip op. at 9
Patent outcomesUS 8,513,590 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,513,590 - PTAB · Nov 13, 2015 · IPR2015-01452 · APJ Karl D Easthom · IPR · Institution
The Board denied institution on claims 1–14 because the disputed claim language lacked clarity, preventing determination of claim scope for the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As explained at the outset, determining if the prior art renders the claims obvious necessarily requires resolving facts and determining the scope of the claims. See BlackBerry, Case IPR2013-00036 (Paper 65, 19– 20). Based on the foregoing discussion, “the prior art grounds of unpatentability must fall, pro forma, because they [would be] based on speculative assumption as to the meaning of the claims.” See id. at 20 (citing In re Steele, 305 F.2d at 862–63). Therefore, we decline to institute an inter partes review of claims 1–14.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“The agreed understanding between the parties about the location of the channel underlies and highlights a clarity problem, because the challenged independent claims specifically recite contrary structure: “each [TFT] having a channel in an ohmic contact layer and a semiconductor layer.” Claim 1 (emphasis added); accord claims 9, 13 (similar recitation). Recognizing the problem with this phrase, both parties essentially propose rewriting it: Petitioner contends that “the only reasonable interpretation of the phrase ‘channel in an ohmic contact layer and a semiconductor layer’ is . . . ‘an ohmic contact layer and a channel in a semiconductor layer.’” Pet. 13. On the other hand, Patent Owner contends “an artisan would clearly understand that ‘a channel in an ohmic contact layer[]” simply means “a region formed by the ohmic contact layer and the semiconductor layer in a channel etching process.” Prelim. Resp. 25 (emphases added) (arguing also that “the channel would not be formed if the central portion of the ohmic contact layer was not etched away”). Neither party cites proper legal authority for what amounts to rewriting the claim phrase in one of manners proposed. Both proposals cannot be correct, and therefore point to an effective material change, as the parties disagree over the claim construction. See Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009) (courts can correct obvious typographical errors “if the correction is not subject to reasonable debate . . . and the prosecution history does not suggest a different interpretation”). Further exemplifying the materiality of the disputed construction, Patent Owner relies on its construction and argues” slip op. at 9
- PTAB / AIA Trials › Real party in interest / privityNot reached
“E. Remaining Contentions The above determination makes it unnecessary to resolve any other disputes, including Patent Owner’s assertion that Petitioner failed to list all the real parties-in-interest. See Prelim. Resp. 5–15.” slip op. at 13
Claim constructioncites GrahamPatents in suitUS 7,460,190 - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Nov 2, 2015 · IPR2015-00448 · APJ Karl D Easthom · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution on claims 1–18 because Apple did not show an abuse of discretion in the Board’s merits decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. See Dec. 11–21. Petitioner’s Rehearing Request—characterizing the modifications as “a single change” as noted—neither clarifies the Petition nor shows that the Board overlooked or misapprehended a matter. Petitioner correctly notes that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness, see Reh’g Req. 5–6; however, extensive modification was just one of many problems obfuscating the asserted ground. The Decision explains that combined with the many other deficiencies of the Petition, Petitioner had not shown a reasonable likelihood of prevailing on any of the challenged claims. See Dec. 11–21 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable a proper Graham analysis).” slip op. at 3
NonePatents in suitUS 8,370,956 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Some claims unpatentablePTAB · Oct 26, 2015 · IPR2014-00727 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 are unpatentable as obvious over Betts; claims 8, 20, 30, and 38 were not shown unpatentable over Betts and the Orange Book.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The term “enclosure unit” encompasses lavatories, aircraft closets, and aircraft galleys. Given the grounds of unpatentability that Petitioner raises, there is no need to further construe this term. 2. “lavatory stall unit” Whereas independent claim 1 recites “enclosure unit,” independent claim 9 recites “lavatory stall unit.” Patent Owner proposes the latter be construed as “a single room, enclosed on all sides, having a toilet and washbasin and large enough to fit a person inside.” PO Resp. 12. For reasons similar to those with respect to “enclosure unit,” we reject Patent Owner’s proposed construction of “lavatory stall unit.” Further, given the grounds of unpatentability that Petitioner raises, there is no need to provide an express construction for this term. More specifically, Petitioner does not rely on any particular prior art lavatory. Indeed, Petitioner does not rely on either of the asserted references to teach a “lavatory stall unit,” instead relying on the knowledge and skill of a person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“These proposed constructions would render the claim language “in a vertical plane” meaningless because tilting a seatback between an upright position and another position would have no effect on the shape of the aft surface of the seatback. Therefore, we do not adopt them. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1115 (Fed. Cir. 2002) (proposed construction that rendered a portion of the claim language meaningless held improper). Rather, we construe “in a vertical plane” according to its ordinary and customary meaning and consistent with the specification, which contrasts a forward wall in a vertical plane (see Fig. 1—the prior art) against a recessed forward wall (see Fig. 2—an embodiment of the claimed invention). In sum, the full limitation at issue encompasses an aft portion (in the case of claim 1) and an aft portion with an exterior aft surface (in the case of claims 9, 21, and 31) that has a flat shape but which is not within a vertical plane. This is within the broadest reasonable construction in light of the Specification, which discloses a substantially conforming recessed forward wall positioned behind the seat (see Ex. 1001, Fig. 2), as opposed to a wall that is flat in a vertical plane (see id. at Fig. 1). 4. “forward wall portion is shaped to substantially conform to the shape of the” slip op. at 10
- BurdenFwd mixedMixed
“As discussed below, Petitioner has shown by a preponderance of the evidence that claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 of the ’838 patent are unpatentable as obvious over Betts. But, Petitioner has not shown by a preponderance of the evidence that claims 8, 20, 30, and 38 are unpatentable as obvious in view of Betts and the Orange Book, as Petitioner has not established that the evidence relied upon within the Orange Book is a printed publication.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“motivated to efficiently use space on an aircraft, as evidenced by Betts, “to provide more room for passengers.” Id. ¶ 65 (quoting Ex. 1003, 1:6–7). Mr. Anderson further testifies that Betts teaches the person of ordinary skill in the art a recessed forward wall configuration that uses space more efficiently than a flat configuration, and that a person of ordinary skill in the art would have been motivated to apply the recessed configuration to other aircraft enclosures, including lavatories. Patent Owner argues that a person of ordinary skill in the art “would have been discouraged from attempting to tailor Betts’ divided space design to any lavatory stall unit (or any other enclosure unit) because Betts required separate enclosures divided both functionally and spatially.” PO Resp. 29. But, Petitioner’s ground of unpatentability is not premised on whether it would have been practical or possible to convert Bett’s “divided space” (i.e., its overhead coat compartment and floor luggage space) into a lavatory. Rather, Petitioner argues that it would have been obvious to apply Bett’s recessed forward wall design to other aircraft enclosures, including a lavatory. Pet. 19 (“One of ordinary skill in the art would recognize that the teachings of the McDonnell Douglas patent [i.e., Betts] are equally applicable to the forward walls of other enclosure units, such as lavatories or galleys.”) (citing Ex. 1009 ¶¶ 65–68); cf. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not 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 Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the 15 features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”).” slip op. at 15
Patent outcomesUS 8,590,838 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,590,838
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.