TRW Automotive US LLCv.Magna Electronics Inc.

Patent Trial and Appeal Board

Aug 11, 2014

09441341 (P.T.A.B. Aug. 11, 2014)

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
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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:
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Patent 7,339,149

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(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).
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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
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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
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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.

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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