• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01450 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 5, 23, 25, 26, 28, 29, and 34–36 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 1–3, 5, 23, 25, 26, 28, 29, and 34–36 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 1–3, 5, 23, 25, 26, 28, 29, and 34–36 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2

  • 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

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “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 6

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

    “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 46–48 (citing Ex. 1113 ¶¶ 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. 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. 1113 ¶ 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. 1113 ¶ 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, and Klappenbach in the manner proposed by Petitioner.” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosure
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · 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 obviousness
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · 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 obviousness
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · 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 obviousness
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · 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 disclosure
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01431 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 62–66 and 69 were unpatentable under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 62–66 and 69 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “§ 112, first paragraph, does not require the description to be literally the same as the claim language at issue. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Rather, by whatever language, the specification only must convey with reasonable clarity to those skilled in the art that, as of the filing date of the application, the inventor was in possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in Vas Cath, and stating “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”). Petitioner contends that pursuant to the holding in Lockwood, the specific combination found in each of the challenged claims of the ’659 patent must be disclosed in the ’287 patent in order to meet the written description standard. See Pet. 10–17 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)). To the extent that Petitioner suggests that the combination must be disclosed in a single embodiment, we disagree. Rather, in Lockwood, the court relied upon the written description standard found in Vas-Cath, and held that because one of the continuations in the chain of five applications did not describe the claim features, the later patent could not claim priority to the earlier patent. Lockwood, 107 F3d at 1571–72 (citing Vas-Cath Inc., 935 F.2d at 1563–64). Consequently, we agree with Patent Owner that the written description requirement does not compel that a single embodiment fully describe the invention. See Prelim. Resp. 9–12. With this standard in mind we analyze Petitioner’s contentions.” slip op. at 7

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “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) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera, rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 43–44 (citing Ex. 1713 ¶ 59). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is a manufacturing advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 37–38 (citing Ex. 1010, 2:11–16; Ex. 1713 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1713 ¶ 59. 5. Conclusion For at least the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 62, 63, 65, 66, and 69 would have been obvious over Blank, Schofield, Klappenbach, and Batavia. C. OBVIOUSNESS OVER BLANK, SCHOFIELD, KLAPPENBACH, BATAVIA, CARTER, AND ADMITTED PRIOR ART” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01430 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 14–21 and 24 were unpatentable under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 14–21 and 24 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “specific combination found in each of the challenged claims of the ’659 patent must be disclosed in the ’287 patent in order to meet the written description standard. See Pet. 10–16 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)). To the extent that Petitioner suggests that the combination must be disclosed in a single embodiment, we disagree.. Lockwood contains no such explicit holding. Rather, in Lockwood, the court relied upon the written description standard found in Vas-Cath, and held that because one of the continuations in the chain of five applications did not describe the claim features, the later patent could not claim priority to the earlier patent. Lockwood, 107 F3d at 1571–72 (citing Vas-Cath Inc., 935 F.2d at 1563–64). Consequently, we agree with Patent Owner that the written description requirement does not compel that a single embodiment fully describe the invention. See Prelim. Resp. 9–12. With this standard in mind we analyze Petitioner’s contentions.” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “a) Structure Configured to Accommodate a Camera Independent claim 1 requires a structure configured to accommodate a forward facing camera. Petitioner relies on Klappenbach’s housing 2 as the claimed structure to accommodate Schofield’s forward facing camera (dimming control 12 having image sensor module 14 that may be a video camera). Pet. 40–44. As Petitioner acknowledges, Klappenbach’s rain sensor does not include a camera; rather, Klappenbach’s outer housing part 2 is designed specifically to accommodate transmitter 10 and receiver 11. See id. at 43; Ex. 1010, 3:46–67, Figs. 1, 2. Rather, Klappenbach’s outer housing part 2 is designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, 3:46–67, Fig. 1. Klappenbach’s sensor is pressed against, and at the angle of the windshield. Id. at 1:45–59; Figs. 1, 2. In contrast, Schofield’s camera is spaced from the windshield, and oriented horizontally. See Ex. 1007, Fig. 1; Prelim. Resp. 27–28. 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. See Pet. 36–38, 41– 44. Consequently, Petitioner has not addressed persuasively this difference between the prior art and the claimed subject matter, nor explained sufficiently how claim 56 is unpatentable. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966) (factor 2); 37 C.F.R. § 42.104(b)(4).” slip op. at 13

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

    “b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 43–43 (citing Ex. 1613 ¶ 58). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is an advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 38 (citing Ex. 1010, 2:11–16; Ex. 1613 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1613 ¶ 59.” slip op. at 14

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01451 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 90–97 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 90–97 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 90–97 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2

  • 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 6

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “written description of the attachment members attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 11–13 (citing Ex. 2013 ¶¶ 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 members. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Petitioner argues that the ’287 patent does not contain sufficient written description of “how the ‘rails, channels or the like’ would adhere to the windshield to permit co-engagement as the inverted U or V-shaped portion 8513a engages the mirror mounting button 8536.” Pet. 13 (citing Ex. 2013 ¶¶ 33, 40). Petitioner’s argument is not persuasive because the challenged claims of the ’659 patent do not recite that the attachment members or structure supported by the attachment members engage the mirror mounting button. See Ariad, 598 F.3d at 1351 (“[T]he test for sufficiency is whether the disclosure . . . reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.”) (emphasis added). Further, as discussed above, the ’287 patent explains that the console supported by the attachment members straddles the mirror mounting button. Ex. 1012, col. 28, ll. 15–28.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “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 42–44 (citing Ex. 2013 ¶ 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. 43–44 (citing Ex. 2013 ¶ 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. 44 (citing Ex. 2013 ¶ 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. 41–44. 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 Carter in the manner proposed by Petitioner.” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosure
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01429 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 56–61 were unpatentable under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 56–61 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “1002, 1:7–23. For a claim to gain the benefit of the filing date of an earlier filed application under 35 U.S.C. § 120, each application in the chain leading back to that earlier application must comply with the written description requirement of 35 U.S.C. § 112, first paragraph. See, e.g., Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007). Satisfaction of the written description requirement under 35 U.S.C. § 112, first paragraph, does not require the description to be literally the same as the claim language at issue. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Rather, by whatever language, the specification only must convey with reasonable clarity to those skilled in the art that, as of the filing date of the application, the inventor was in possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in Vas Cath, and stating “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “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) › Motivation to combine / reasonable expectation of successMotivation not found

    “b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 44–45 (citing Ex. 1513 ¶ 58). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is an advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 37–38 (citing Ex. 1010, 2:11–16; Ex. 1513 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1513 ¶ 59.” slip op. at 14

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · 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 obviousness
  Patents in suitUS 8,692,659

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.