- TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01433 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 70–76 obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge to the patentability of claims 70–76 of the ’659 patent as unpatentable under 35 U.S.C. § 103. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
- BurdenNot shown unpatentable
“Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment members. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“of Blank, Schofield, Klappenbach, and Carter teaches or suggests all the limitations of the challenged claims. Independent claim 70 recites “a structure configured for mounting to said plurality of attachment members . . . wherein said structure is configured to accommodate a forward facing camera.” Ex. 1002, col. 52, ll. 45–53. Petitioner argues that the housing in Klappenbach corresponds to the claimed structure configured to accommodate a forward facing camera, and that the vehicle headlight dimming control in Schofield includes the claimed forward facing camera. Pet. 37–41. The housing in Klappenbach is designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner does not provide a specific explanation or identify specific evidence showing that the housing in Figures 1 and 2 of Klappenbach also is configured to accommodate a forward facing camera. Pet. 37–41. Therefore, on this record, Petitioner has not shown sufficiently that the combined teachings of Blank, Schofield, Klappenbach, Carter, and optionally Batavia would have taught or suggested the limitation “said structure is configured to accommodate a forward facing camera” to one of ordinary skill in the art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 39–41 (citing Ex. 1813 ¶ 56). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 40–41 (citing Ex. 1813 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 41 (citing Ex. 1813 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 39–41. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, Klappenbach, Carter, and optionally Batavia in the manner proposed by Petitioner.” slip op. at 12
§ 103 obviousnessPatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01426 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 37, 41, 43, and 45–48 were unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet.”) requesting inter partes review of claims 37, 41, 43, and 45–48 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. 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.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 37, 41, 43, and 45–48 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“written description of an attachment member attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 12–15 (citing Ex. 1213 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We also are not persuaded, on this record, that it would have been obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 48 (citing Ex. 1213 ¶ 56). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 48 (citing Ex. 1213 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 48–49 (citing Ex. 1213 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 45–49. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, and Klappenbach in the manner proposed by Petitioner.” slip op. at 12
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01428 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because TRW did not show a reasonable likelihood of proving claims 38, 39, 42, 48, and 49 obvious over either asserted ground.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“obvious over the ’287 patent. Pet. 2. The ’659 patent is a continuation of the ’287 patent. Id. at 19; Ex. 1002, col. 1, ll. 7–23. Petitioner argues that the ’287 patent is prior art to the ’659 patent because the ’287 patent does not satisfy the written description requirement with respect to the challenged claims of the ’659 patent. Pet. 13–18. Patent Owner argues that the ’287 patent satisfies the written description requirement, and, thus, is not prior art with respect to the challenged claims of the ’659 patent. Prelim. Resp. 5–19. We have reviewed the parties’ assertions and supporting evidence, and, for the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that the ’287 patent is prior art.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment member. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 44–46 (citing Ex. 1413 ¶¶ 56, 59). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach.” slip op. at 11
Claim construction§ 103 obviousnessPatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01436 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 78–80 and 83–89 were unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet.”) requesting inter partes review of claims 78–80 and 83–89 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. 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.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 78–80 and 83–89 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“written description of an attachment member attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 10–13 (citing Ex. 1913 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the following: As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment member. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“camera.” Ex. 1002, col. 53, l. 63–col. 54, l. 2. Petitioner argues that the housing in Klappenbach corresponds to the claimed structure configured to accommodate a forward facing camera, and that the vehicle headlight dimming control in Schofield includes the claimed forward facing camera. Pet. 39–42. The housing in Klappenbach is designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner does not provide a specific explanation or identify specific evidence showing that the housing in Figures 1 and 2 of Klappenbach also is configured to accommodate a forward facing camera. Pet. 39–42. Therefore, on this record, Petitioner has not shown sufficiently that the combined teachings of Blank, Schofield, Klappenbach, and Carter would have taught or suggested the limitation “said structure is configured to accommodate a forward facing camera” to one of ordinary skill in the art.” slip op. at 11
§ 103 obviousness§ 112 disclosurePatents in suitUS 8,692,659 - Coleman Cable, LLC / Jiawei Technology (HK) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentablePTAB · Dec 21, 2015 · IPR2014-00935 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45, and 48–50 are unpatentable under the instituted anticipation and obviousness grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Notwithstanding a “reasonably comprehensive search of U.S. patents and published patent applications on the USPTO website to look for the term ‘surround frame’” by Dr. Ducharme (id. ¶ 81), there is no evidence that the term “surround frame” is a term that has a single recognized meaning to a person of ordinary skill in the technology relevant to the claimed invention of the ’370 patent, or is otherwise considered a term of art. See Tr. 67, ll. 15–23 (“We don’t have anything like that in the record, Your Honor.”). Dr. Ducharme was not able to identify a single patent that used the term “surround frame” in a technology analogous to the claimed invention. Patent Owner maintains, however, that the term “surround frame” has “a uniform, well accepted and consistently used meaning to persons in the art . . . . That is our position.” Id. at 51, ll. 2–6. The evidence of patents and published patent applications directed to doors and window frames, eyeglass frames, and other technologies on which Patent Owner relies, is not persuasive that the detailed construction of the term “surround frame,” advocated by Patent Owner and quoted above, is the broadest reasonable construction of that term based on the intrinsic and extrinsic evidence. The patents and published patent applications have different specifications, use the term in different contexts, and do not show that the term has a common meaning across technology areas.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, a court may consider various factors, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.1986)). The ’370 patent, Ouyang, and Chliwnyj include circuit diagrams, and Norton and Kuelbs address circuitry for lighting assemblies. The parties seem to agree that a person of ordinary skill in the art would be capable of reading the circuit diagrams and understanding what function(s) they perform, at least at some level. PO Resp. 3 (arguing that “[t]he primary area of expertise of a [person of ordinary skill in the art] is that of a person having knowledge of electrical engineering, in particular the ability to recognize how a pre-designed circuit may operate”); Pet. Reply 2–5. Patent Owner in its Response, however, asserts that a person of ordinary skill in the art would have had a “basic knowledge of . . . electrical circuits” and related components in solar garden lights, but he or she would be unable to make any modifications to those circuits and would only be capable of taking them whole cloth and inserting them into another device. See PO Resp. 4–5; see also Ex. 2022 ¶ 39 (Patent Owner’s declarant Dr. Ducharme testifying that a person of ordinary skill would be capable of “making only simplistic changes to the exterior aesthetic of the product to make the product appealing to consumers. But a person of ordinary skill and creativity in the art does not have the ability to re-design the aesthetic effect of a solar garden light by either mechanical or electrical means.”). Patent Owner would seemingly limit the person of ordinary skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Based on our review of the factors above in the current record, we agree” slip op. at 34
- Expert testimonyPetitioner expert creditedDecided for petitioner
“1. Dr. Shackle’s Declaration Petitioner cites and relies on the Declaration of Dr. Shackle, which is Exhibit 1002, for evidentiary support. Patent Owner objects to Dr. Shackle’s qualifications as an expert because “Dr. Shackle has never designed a solar light.” PO Resp. 10. Patent Owner also objects to Dr. Shackle’s qualifications because he conducted a “retrospective review” of the prior art. Id. at 11. Dr. Shackle has a Ph.D. in Physics. Ex. 1002 ¶ 2. Physics is “the branch of science concerned with the properties of matter and energy and the relationships between them. It is based on mathematics and traditionally includes mechanics, optics, electricity and magnetism, acoustics, and heat.”6 In addition to his academic credentials, Dr. Shackle has over twenty years of experience in the field of lighting electronics, with particular emphasis on LED drivers and electronic ballasts. Ex. 1002 ¶ 3. This experience includes, but is not limited to: President and Founder of Photolume, a consulting company in the field of lighting electronics products; Director of Power Supply Products at Light Based Technologies; Chief Technologist at Lightech Electronics North America, Inc.; and Director of Engineering and later V.P. of Advanced Technology at Universal Lighting Technologies, Inc. Id. In these positions, Dr. Shackle was responsible for developing a number of LED circuits and products. Id., App’x A (CV of Dr. Shackle). The ’370 patent refers very generally to LEDs, solar panels, and related circuits. See, e.g., Ex. 1001, col. 6, ll. 25–53. Considering the well-known basic technology of solar cells and solar circuits, and the type and sophistication of the 6 physics. Dictionary.com. Collins English Dictionary - Complete & Unabridged 10th Edition. HarperCollins Publishers. http://dictionary.reference.com/browse/physics (accessed: December 16, 2015) (Ex. 3002). solar cell technology disclosed and claimed in the ’370 patent, Dr. Shackle appears qualified by knowledge, experience, training, and education to testify in the form of an opinion in this proceeding. Patent Owner was entitled to, and did, cross-examine Dr. Shackle based on his Declaration testimony as part of routine discovery. See 37 C.F.R. § 42.51(b)(1)(ii). We discussed the issue of Dr. Shackle’s “retrospective review” above in the” slip op. at 32
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“a. General Legal Principles [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). “The identical invention must be shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).” slip op. at 36
Patent outcomesUS 8,089,370 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,089,370 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01427 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 6–10, 12, 13, 22, and 27 obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet.”) requesting inter partes review of claims 6–10, 12, 13, 22, and 27 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. 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.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 6–10, 12, 13, 22, and 27 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2
- BurdenNot shown unpatentable
“As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment members. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We also are not persuaded, on this record, that it would have been obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 46–47 (citing Ex. 1313 ¶ 56). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 47–48 (citing Ex. 1313 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 48 (citing Ex. 1313 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 45–48. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, Klappenbach, and optionally Batavia in the manner proposed by Petitioner. For at least the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 6–10, 12, and 13 would have been obvious over Blank, Schofield, Klappenbach, and optionally Batavia.” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,692,659 - Jiawei Technology (HK) Ltd. / Jiawei Technology (USA) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00938 · APJ William V Saindon · IPR · Final written decision
Claims 24–30 and 35 are unpatentable as obvious over the instituted combinations of Chliwnyj, Wu, Pu, Dowling, and Lau.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner alleged that Petitioner failed to list all real parties in interest, and we authorized the parties to brief the issue. Paper 37 (Motion to Terminate); Paper 44 (Opposition); Paper 47 (Reply). We denied Patent Owner’s Motion to Terminate. Paper 57.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties seem to be in agreement that a person of ordinary skill in the art would be capable of reading the diagrams and understanding what function(s) they perform, at least at some level. PO Resp. 4 (a person of ordinary skill in the art has “the ability to recognize how a pre-designed circuit may operate”); Pet. Reply 3 (a person of ordinary skill in the art “would [have been] able to understand the patent’s descriptions and drawings”). Patent Owner’s position, however, seems to be that although a person of ordinary skill in the art would recognize what these circuits do, he or she would be unable to make any modifications to those circuits and would only be capable of taking them whole cloth and inserting them into another device. Patent Owner would seemingly limit the person of ordinary skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton”). We agree with Petitioner that a person of ordinary skill in the art at the time of the ’827 patent7 would have had a graduate degree in electrical or electronics engineering or physics with experience in circuit design, or a bachelor’s degree in electrical or electronics engineering or physics with at least two years industrial experience and experience in circuit design, and apply that level of skill for purposes of this Decision. See Ex. 1002 ¶ 36.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“B. Dr. Shackle is Qualified to Testify to the Level of Ordinary Skill in the Art Patent Owner argues that Petitioner’s declarant, Dr. Shackle, is not qualified to testify as to the level of ordinary skill in the art. PO Resp. 14– 15. Patent Owner argues that, for example, he “has never supervised engineers in the design of solar lights.” Id. at 14. Patent Owner argues we should give his declarant, Dr. Ducharme, more weight because Dr. 7 The application issuing as the ’827 patent was filed in April 2005 and is a continuation-in-part of the application, filed in February 2004 and claiming the benefit of a foreign application filed in December 2003, that issued as the ’477 patent. Ducharme is allegedly better qualified. Id. We weigh competing testimony of witnesses on an observation-by-observation basis, based on the witness’s skills and experience, as well as the reasoning and evidence they offer with respect to that particular observation. Further, we are not persuaded that Dr. Shackle would not have been a person of ordinary skill in the art at the time of the invention simply for not being a supervisor of engineers designing solar lights. Instead, we find that Dr. Shackle has ample experience in the field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5; Ex. 1047 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr. Shackle is qualified to testify).” slip op. at 11
- Prior constructionPrior construction adoptedDecided for patent owner
“Owner’s proposed constructions of this term because we determined that both proposed constructions focused too much on how the varying color was created rather than what was varying color. Dec. on Inst. 6–9. Or, to put it another way, we determined that the claims required a particular observable phenomenon (varying color) from a particular structure (a circuit having at least two lamps) but did not limit the manner in which the structures were operated to achieve that result. As we stated then, we declined to incorporate any particular way to create varying color because the specification of the ’827 patent does not so limit the term. Id. at 7–8. For that reason, we construed “varying colour” as “a perceptible changing of color over time.” Id. at 8.” slip op. at 13
Patent outcomesUS 7,429,827 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,429,827 - Jiawei Technology (HK) Ltd. / Jiawei Technology (USA) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00936 · APJ William V Saindon · IPR · Final written decision
Claims 1–29 are unpatentable as obvious over four combinations of Chliwnyj, Wu, Hung, Xu, and Pu.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner alleged that Petitioner failed to list all real parties in interest and we authorized the parties to brief the issue. Paper 34 (Motion to Terminate); Papers 42, 43 (Opposition); Paper 46 (Reply). We denied Patent Owner’s Motion to Terminate. Paper 56.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). We agree with Petitioner that a person of ordinary skill in the art at the time of the ’477 patent7 would have had a graduate degree in electrical or electronics engineering or physics with experience in circuit design, or a bachelor’s degree in electrical or electronics engineering or physics with at least two years industrial experience and experience in circuit design, and apply that level of skill for purposes of this Decision. See Ex. 1002 ¶ 36.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“engineers in the design of solar lights.” Id. at 13. Patent Owner argues we should give his declarant, Dr. Ducharme, more weight because Dr. Ducharme is allegedly better qualified. Id. We weigh competing testimony of witnesses on an observation-by-observation basis, based on the witness’s skills and experience, as well as the reasoning and evidence they offer with respect to that particular observation. Further, we are not persuaded that Dr. Shackle would not have been a person of ordinary skill in the art at the time of the invention simply for not being a supervisor of engineers designing solar lights. Instead, we find that Dr. Shackle has ample experience in the field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5; Ex. 1050 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr. Shackle is qualified to testify).” slip op. at 12
- Prior constructionPrior construction adoptedDecided for patent owner
“phenomenon (varying color) from a particular structure (a circuit having at least two lamps) but did not limit the manner in which the structures were operated to achieve that result. As we stated then, we declined to incorporate any particular way to create varying color because the specification of the ’477 patent does not so limit the term. Id. at 7. For that reason, we construed “varying colour” as “a perceptible changing of color over time.” Id. at 8.” slip op. at 14
Patent outcomesUS 7,196,477 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,196,477 - Sensus USA, Inc. v. Certified Measurement, LLCInstitution deniedPTAB · Dec 11, 2015 · IPR2015-01439 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 43 unpatentable over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’453 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’453 patent.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner contends that Petitioner’s identification of the real parties-in-interest is incomplete, and that the Petition should be denied as failing to comply with 35 U.S.C. § 312(a)(2). Prelim. Resp. 30–31. Patent Owner asserts that in a related litigation involving the ’453 patent, Petitioner identified an insurance company as covering some of the costs of defending the action against Patent Owner. See Ex. 2001. Patent Owner argues: A hallmark of indemnity or insurance agreements that are available to satisfy part or all of a judgment or to reimburse payments of same is an ability for the insurer or indemnitor to control over [sic] aspects of the litigation, including the defense and maintenance of an inter partes review which seek[s] to invalidate the subject patent. Prelim. Resp. 30. Patent Owner’s argument is generic and fails to identify any specific evidence that any parties other than those identified by Petitioner actually is exercising control over or could exercise control over this proceeding.1 Accordingly, we decline to deny the Petition on this basis. D. The References Petitioner relies on the following references: U.S. Patent No. 4,077,005, issued Feb. 28, 1978 (Ex. 1005, “Bishop”); U.S. Patent No. 5,199,068, issued Mar. 30, 1993 (Ex. 1006, “Cox”); U.S. Patent No. 5,689,442, issued Nov. 18, 1997 (Ex. 1007,” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Petitioner does not propose a construction for “augmented measurement” aside from stating that it “is described in the individual claims of the patent.” Pet. 17. Nevertheless, Petitioner’s argument suggests that generating an “augmented measurement” requires effecting some combination of the elements recited in the claim—the first signal, the second signal, and the third signal. See Pet. 27 (asserting that Cox disclosing “combining” the previously recited elements of the claim in arguing that Cox teaches “generating an augmented measurement”). Thus, both Petitioner and Patent Owner recognize that generating an augmented measurement requires combining specified elements of the claim. We agree. The parties’ recognition that an augmented measurement requires combining specified elements of the claim is consistent with the specification of the ’453 patent. The ’453 patent explains that an “augmented measurement comprising the cleartext time plus the physical measurement” is created by adding a physical measurement of any physical parameter or event to a time. Ex. 1001, 7:66–8:2.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s argument is not persuasive because Petitioner fails to show that Bishop’s position P signal is formed from two separate signals based at least in part on two physical measurements. Petitioner’s cited portions of Bishop fail to disclose how position P is generated aside from stating that “position P of the ship is determined to an accuracy of + 2 nm . . . by the ship’s navigation equipment 48.” Ex. 1005, 2:63–66. Petitioner, however, has not identified where, if at all, Bishop discloses how the navigation equipment generates the position of the ship. Petitioner’s citations to Bishop’s column 3 refer to Bishop’s disclosure of generating a combined message, which Bishop designates as IS + P + T1, and then enciphers. See, e.g., id. at 3:7–23. Additionally, Petitioner’s reliance on paragraph 40 of the Nielson Declaration fares no better. Dr. Nielson’s testimony includes the same statements as the Petition without providing additional explanation or evidentiary support for us to conclude that Bishop expressly or inherently discloses that its position P signal is formed from two separate signals based at least in part on two physical measurements. See 37 C.F.R. § 42.65(a). Accordingly, on this record, we are not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Bishop discloses each and every element of claim 43 of the ’453 patent.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,289,453 - PTAB · Dec 11, 2015 · IPR2015-00605 · APJ Ken B Barrett · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and ordered claims 1–8 canceled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(4), “[a]bandonment of the contest” is construed as a request for adverse judgment. Accordingly, we interpret Patent Owner’s Notice as a request for adverse judgment. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims is appropriate. Accordingly, it is: ORDERED that Patent Owner’s request for adverse judgment under 37 C.F.R. § 42.73(b) with respect to claims 1–8 of U.S. Patent No. 6,837,551 B2 is granted; and FURTHER ORDERED that claims 1–8 of U.S. Patent No. 6,837,551 B2 shall be canceled.” slip op. at 2
NonePatents in suitUS 6,837,551
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.