TRW Automotive US LLCv.Magna Electronics Inc.Download PDFPatent Trial and Appeal BoardAug 11, 201409441341 (P.T.A.B. Aug. 11, 2014) Copy Citation Trials@uspto.gov Paper 23 571-272-7822 Entered: August 11, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ TRW AUTOMOTIVE US LLC, Petitioner, v. MAGNA ELECTRONICS, INC., Patent Owner. ____________ Case IPR2014-00261 Patent 7,339,149 Before JUSTIN T. ARBES, PATRICK R. SCANLON, and JO-ANNE M. KOKOSKI, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION Petitioner’s Request for Rehearing 37 C.F.R. § 42.71 IPR2014-00261 Patent 7,339,149 2 I. INTRODUCTION Petitioner TRW Automotive US LLC filed a Request for Rehearing (Paper 21, “Req. Reh’g”) of the Decision mailed June 26, 2014 (Paper 19, “Decision”), which instituted inter partes review of claims 1–5, 7, 8, and 13 of U.S. Patent No. 7,339,149 B1 (Ex. 1002, “the ’149 patent”). In its request, Petitioner seeks reconsideration of our decision not to institute inter partes review with respect to claim 41 of the ’149 patent. Req. Reh’g 1. The Request for Rehearing is denied. II. STANDARD OF REVIEW In determining whether to institute an inter partes review of a patent, the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). III. ANALYSIS In the Decision, we denied Petitioner’s challenge of claim 41 because the Petition (Paper 17, “Pet.”) did not explain sufficiently how the prior art discloses the claim limitation “as a function of the output of one or more pixels within one of said portions relative to the output of other pixels within the same portion.” Decision 25–26. Petitioner asserts that this finding “ignores, without refutation, the evidentiary basis of [Petitioner’s] position.” Req. Reh’g 3. In support of this assertion, Petitioner argues that certain passages on pages 2 and 3 of Yanagawa (Ex. 1005) “directly teach[]” the above-quoted limitation because Yanagawa: IPR2014-00261 Patent 7,339,149 3 (1) expressly teaches that image signal processor 14 extracts a single color (red) for taillights, and a separate single color (white) for headlights; (2) causes the presence of taillights or headlights within the imaged video to be recognized based on this extracted image signal, and (3) sends the recognition results (i.e. the identification of taillights or headlights) to an executing part 15 which controls the headlights of the vehicle. Req. Reh’g 3–4 (citing Pet. 35–36). This disclosure merely indicates that the headlights are controlled based on either extracted red light or extracted white light. Thus, according to Petitioner, Yanagawa discloses controlling the headlights based on detection of a single color. 1 See also id. at 5 (Yanagawa “expressly says taillights are detected by a single color (red), and executing part 15 controls the headlights based on the detection of taillights or headlights.”). However, even assuming arguendo that Yanagawa discloses controlling headlights based on detection of a single color, there is no indication of how such control is based on the output of some of the pixels receiving the single color relative to the output of other pixels receiving the same single color. In other words, Petitioner did not explain sufficiently in the Petition how the headlights of Yanagawa are controlled based on a function of the output of one or more pixels within a portion of pixels relative to the output of other pixels within the same portion. Thus, contrary to Petitioner’s assertion, we did not misapprehend or overlook evidence supporting Petitioner’s position. 1 Petitioner appears to assert that Yanagawa’s detection of a single color is the same as processing the output of the pixels from a “particular portion” of the image sensor as recited in claim 41, arguing that Patent Owner’s Preliminary Response (Paper 7, “Prelim. Resp.”) “states ‘[t]his is not the same as providing a control signal as a function of the output of pixels of one portion or color relative to the output of pixels of the same portion or color, as required in the subject claim.’” Req. Reh’g 5 (quoting Prelim. Resp. 46–47). IPR2014-00261 Patent 7,339,149 4 We also stated in the Decision that “there is no indication of how any teaching from Kawahara (Ex. 1008) is used to modify the Yanagawa-Bendell (Exs. 1005, 1006) combination to achieve the ‘portion’ limitations of claim 41.” Decision 26. Petitioner asserts that this finding is an abuse of discretion, arguing that Kawahara is not relied on solely as “teaching and suggesting the ‘portion’ limitation.” Req. Reh’g 5. However, stating that Kawahara is not relied on solely to disclose the “portion” limitations of claim 41 does not show that we abused our discretion or ignored evidence in making the above-mentioned finding. Furthermore, Petitioner states that “Kawahara’s filters are only relied upon by [Petitioner] as ‘yet another way of providing [red, green, and blue] signals, but using a filter array for selective transmission of light to a single chip sensor.’” Id. at 6 (quoting Pet. 35) (emphasis added). Petitioner’s statement that Kawahara is relied on only to disclose a way of providing red, green, and blue signals seems to confirm that Kawahara is not relied on to disclose the “portion” limitation (i.e., controlling headlights based on a function of the output of one or more pixels within a portion of pixels relative to the output of other pixels within the same portion). Petitioner also argues that “Bendell satisfies this [‘portion’] limitation by teaching ‘a blue-responsive solid-state imager 14, a red-responsive imager 16 and two green-responsive imagers 18 and 20.’” Id. at 5-6 (citing Pet. 34). We are not persuaded by this argument. The cited excerpts from the Petition pertain to other limitations of claim 41, not the “portion” limitation. Further, the Petition indicates Bendell’s disclosure of the four imagers shows “Bendell is fully capable of providing the [red, green, and blue] signals for processing in the manner of Yanagawa.” Pet. 34. Merely disclosing that the signals are provided for processing, however, does not provide any disclosure of how the signals are IPR2014-00261 Patent 7,339,149 5 processed. The Petition does not explain sufficiently how Bendell allegedly discloses controlling headlights based on a function of the output of one or more pixels within a portion of pixels relative to the output of other pixels within the same portion. Thus, we could not have misapprehended or overlooked Petitioner’s argument because it was not raised in the Petition. The Decision also stated that Petitioner did not “articulate adequate reasoning based on rational underpinnings to explain why one of ordinary skill would have been led to combine Kawahara with Yanagawa and Bendell.” Decision 26. Petitioner disputes the accuracy of this statement, arguing that the Declaration of Jeffrey A. Miller, Ph.D. (Ex. 1011) states “even where Yanagawa is found to not include an output of pixels, it nevertheless would be a simple substitution to substitute the television camera 11 of Yanagawa with the camera of Bendell or Kawahara.” Req. Reh’g 6 (quoting Ex. 1011 ¶ 34). This argument is not persuasive, however, because Petitioner and Dr. Miller do not explain in any detail why the asserted combination would be a simple substitution. Further, Petitioner’s asserted ground of unpatentability relies on the combination of Yanagawa, Bendell, and Kawahara. Pet. 30. Dr. Miller’s statement describes combining Yanagawa with Bendell or Kawahara, and does not provide a sufficient rationale for why one of ordinary skill in the art would have been led to combine Kawahara with Yanagawa and Bendell. Petitioner also argues that “sufficient motivation to combine was shown with respect to Bendell,” and “because Kawahara was merely included as further evidence of the ‘portion’ limitation in addition to Bendell, the same motivation is applicable to Kawahara.” Req. Reh’g 6. However, as noted above, Petitioner asserts that Kawahara’s filter arrays provide another way of providing red, green, and blue signals. Id.; Pet. 34–35. Petitioner does not identify where the assertion IPR2014-00261 Patent 7,339,149 6 that Kawahara provides further evidence of the “portion” limitation previously was presented in the record. Nor is there any previous indication in the record that the rationale for combining Kawahara with Yanagawa and Bendell was the same rationale for combining Bendell with Yanagawa. Accordingly, we could not have misapprehended or overlooked this argument because it was not raised in the Petition. For the foregoing reasons, Petitioner has not shown an abuse of discretion in denying the asserted ground of unpatentability of claim 41. IV. ORDER Accordingly, it is hereby ORDERED that Petitioner’s Request for Rehearing is denied. IPR2014-00261 Patent 7,339,149 7 PETITIONER: Josh Snider Timothy Sendek A. Justin Poplin LATHROP & GAGE LLP patent@lathropgage.com tsendek@lathropgage.com jpoplin@lathropgage.com PATENT OWNER: Timothy A. Flory Terence J. Linn GARDNER, LINN, BURKHART & FLORY, LLP Flory@glbf.com linn@glbf.com David K.S. Cornwell STERNE, KESSLER, GOLDSTEIN & FOX PLLC Davidc-PTAB@skgf.com Copy with citationCopy as parenthetical citation