TRW Automotive U.S. LLCv.Magna Electronics Inc.

Patent Trial and Appeal Board

Aug 27, 2014

12273879 (P.T.A.B. Aug. 27, 2014)

Trials@uspto.gov Paper 20
Tel: 571-272-7822 Entered: August 27, 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 IPR2014-00262
Patent 7,655,894 B2
_______________

Before JUSTIN T. ARBES, BENJAMIN D. M. WOOD, and
NEIL T. POWELL, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION
Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

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I. INTRODUCTION
TRW Automotive US LLC (“TRW”) filed a request for rehearing
(Paper 17) (“Rehearing Request”) of our decision, dated June 26, 2014
(Paper 15) (“Decision”) instituting an inter partes review but denying
institution with respect to several of TRW’s proposed grounds of
unpatentability. Reh’g Req. 1. Specifically, TRW requests that we
reconsider our determination not to institute an inter partes review of the
following claims of U.S. Patent No. 7,655,894 B2 (“the ’894 patent”) on the
following grounds: (1) claim 21 as anticipated by Kenue;
1
(2) claims 4, 17-
21, and 24 as obvious over Yanagawa,
2
Applicant’s Admitted Prior Art
(AAPA),
3
Bendell,
4
Vellacott,
5
Koshizawa,
6
and Kenue; (3) claim 27 as
obvious over Yanagawa, AAPA, Bendell, Vellacott, Koshizawa, Kawahara,
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and Kenue; (4) claim 9 as obvious over Yanagawa, AAPA, Bendell,
Vellacott, Koshizawa, and Bottesch;
8

9
and (5) claim 12 as obvious over

1
U.S. Patent No. 4,970,653 to Kenue, Ex. 1004.
2
JP S62-121837 to Yanagawa et al., Ex. 1005.
3
TRW identifies the following statement in the Specification of the ’894
patent as AAPA: “Photosensing array 38 may be a charge couple device
(CCD) array of the type commonly utilized in video camcorders and the like.
Alternatively, photosensing array 38 could be a CMOS array of the type
manufactured by VLSI Vision Ltd. (VVL) of Edinburgh, Scotland.”
Ex. 1002, 8:16-20; see Pet. 23; Ex. 1014 ¶ 23.
4
U.S. Patent No. 4,521,804 to Bendell, Ex. 1006.
5
Oliver Vellacott, CMOS in Camera, IEE REVIEW (May 1994), Ex. 1007.
6
U.S. Patent No. 5,177,606 to Koshizawa, Ex. 1008.
7
U.S. Patent No. 4,758,883 to Kawahara, Ex. 1013.
8
U.S. Patent No. 5,166,681 to Bottesch et al., Ex. 1010.
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Yanagawa, AAPA, Bendell, Vellacott, Koshizawa, Kawahara, and
Tadashi.
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Id. For the reasons stated below, we deny the Rehearing
Request.
II. STANDARD OF REVIEW
Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
a panel will review the decision for an abuse of discretion.” An abuse of
discretion occurs when a “decision was based on an erroneous conclusion of
law or clearly erroneous factual findings, or . . . a clear error of judgment.”
PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
(Fed. Cir. 1988) (citations omitted). The request must identify, specifically,
all matters the party believes the Board misapprehended or overlooked.
37 C.F.R. § 42.71(d).
III. DISCUSSION
A. Claim 21
In the Decision, we denied TRW’s challenge of claim 21 because we
were not persuaded that TRW was reasonably likely to show that Kenue
teaches the limitation “wherein objects of interest are at least one of
qualified and disqualified based on object motion in said field of view of
said imaging sensor” (the “qualified/disqualified limitation”). Dec. 9-12.
TRW asserts that this was an abuse of discretion. Reh’g Req. 2-5. First,

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In the Rehearing Request, TRW argues that claim 9 would have been
obvious over Yanagawa, AAPA, Bendell, Vellacott, Kosizawa, Kawahara,
and Kenue. Reh’g Req. 1. However, in the Petition, the proposed ground of
unpatentability of claim 9 was based on the combination of Yanagawa,
AAPA, Bendell, Vellacott, Koshizawa, and Bottesch. Pet. 36.
10
JP HEI4-127280 to Tadashi, Ex. 1011.
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TRW argues that we erred in construing the term to mean that “objects are at
least one of determined to be objects of interest and determined to not be
objects of interest based at least in part on object motion in said field of view
of said imaging sensor.” Dec. 8. TRW argues in the Rehearing Request that
this construction is erroneous because:
The claim does not require the “object” that is moving to itself
be qualified or disqualified (as opposed to the “object of
interest” which need not exhibit motion but is the subject of
qualification/disqualification). Instead, the claim merely
requires objects of interest to be qualified or disqualified based
at least in part upon object motion. This may be the motion of
any “object,” not only the “object of interest.”
Reh’g Req. 3. Second, TRW asserts that Kenue discloses the
qualified/disqualified limitation under TRW’s proposed construction of the
term. Id. at 3-5. In its Rehearing Request, TRW relies on an excerpt from
Kenue that, according to TRW, “show[s] that Kenue performs processing to
identify lane markers in the case of one vehicle trailing another.” Id. This
excerpt reads as follows:
FIG. 3 illustrates the presence of a vehicle 30 or other obstacle
in the roadway of FIG. 2. If the other vehicle is close, say,
within 50 feet of the trailing vehicle, it tends to obscure the lane
markers 24 to such an extent that there is insufficient
information to determine the boundaries. In that case an
obstacle warning is given and no further image processing is
done on that frame. When the obstacle 30 is more than 50 feet
away the image is processed but the obstacle is effectively
erased from the image by removing horizontal and vertical
lines, thereby making the subsequent processing steps simpler.
Ex. 1009, 3:10-21. According to TRW, this passage teaches that “Kenue’s
processing to qualify and disqualify lane markers ‘at least in part’ depends
upon motion of the other vehicle in the field of view . . . because the system
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waits for movement to occur out past a separation distance of 50 feet where
shorter distances affect processing by obscuring the lane boundaries.”
Id. at 4.
TRW did not propose the above construction of the
qualified/disqualified limitation in its Petition. Nor did TRW argue, as it
does now, that Kenue’s processing to “qualify and disqualify lane markers”
in part depends on “motion of the other vehicle in the field of view,” and
that the system “waits for movement to occur out past a separation distance
of 50 feet” to process the image. Instead, TRW simply quoted portions of
Kenue in a claim chart, with no substantive analysis. Pet. 19-20. It is
simply too late for TRW to provide its claim construction and analysis for
the first time in its Rehearing Request. A rehearing request under 37 C.F.R.
§ 42.71(d) is not an opportunity to submit new arguments that could have
been submitted in the petition.
Moreover, even if we were to consider TRW’s newly offered
construction and analysis, we would not be persuaded that we abused our
discretion in determining that TRW is not reasonably likely to show that
Kenue teaches the qualified/disqualified limitation. As an initial matter,
TRW’s current analysis is inconsistent with the testimony of its declarant,
Jeffrey A. Miller, Ph.D., that TRW submitted as Exhibit 1014 to its Petition.
Dr. Miller testified that the above passage from Kenue teaches disqualifying
the detected “obstacle.” See Ex. 1014 ¶ 15 (“The above [passage of Kenue]
is disqualifying an object of interest because where an obstacle moves to
more than 50 feet away, the obstacle is erased effectively from the image”
(emphasis added)). But in the Rehearing Request, TRW cites this passage as
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teaching the qualification and disqualification of lane markers. Reh’g
Req. 4. TRW does not acknowledge or explain this apparent inconsistency.
Moreover, we do not agree with TRW’s characterization of this
passage of Kenue. This passage teaches that Kenue’s system issues an
obstacle warning and stops image processing—or effectively erases the
obstacle from the image—when “the other vehicle is close, say, within 50
feet of the trailing vehicle,” or “is more than 50 feet away.” Ex. 1009, 3:12-
19 (emphasis added). In other words, the system determines what action to
take based on obstacle position at a moment in time; it does not “wait for
movement to occur out past a separation distance” as TRW suggests. See
Reh’g Req. 4.
B. Claims 4, 17-21, 24, and 27
In its Petition, TRW asserted that claims 4, 17-21, 24, and 27 would
have been obvious over Kenue combined with other references. Pet. 34-35,
48, 55, 60. Each of these claims contains the qualified/disqualified
limitation, and TRW relied on the same excerpts from Kenue as teaching
this limitation as it did with respect to claim 21. Id. In its Rehearing
Request, TRW argues that we erred in denying institution of inter partes
review of these claims for the same reasons discussed above with respect to
claim 21. Reh’g Req. 5-9. Because we were not persuaded that we abused
our discretion in not instituting inter partes review of claim 21, we are
likewise not persuaded that we abused our discretion in not instituting
review with respect to claims 4, 17-21, 24, and 27.
C. Claim 9
Claim 9 depends from claim 1 and additionally recites “wherein said
image sensing system determines a background light level.” In its Petition,
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TRW asserted that Bottesch teaches this additional limitation and that “the
simple inclusion of the ambient light sensor of Bottesch within the system of
the ’894 Patent would be obvious to try by choosing from a finite number of
identified, predictable solutions, with a reasonable expectation of success.”
Pet. 37. In our Decision, we were not persuaded by TRW’s analysis because
its obvious-to-try rationale was “based on a mere conclusory statement” and
thus lacked “a supporting articulated reasoning with some rational
underpinning.” Dec. 19 (internal citations omitted).
TRW now claims that we abused our discretion in not instituting
review as to claim 9. First, TRW faults us for instituting review with respect
to claim 16 but not with respect to claim 9, even though TRW relied on
Bottesch as teaching the additional limitations of both claims. Reh’g Req. 9.
But for each of claims 9 and 16, TRW relied on different passages within
Bottesch as teaching different limitations, and asserted different reasons to
combine these different teachings of Bottesch with Yanagawa and the other
references. Specifically, with respect to claim 9, TRW argued that the
“inclusion of the ambient light sensor of Bottesch” with the other references
would be “obvious to try.” Pet. 37. Conversely, with respect to claim 16,
TRW asserted that locating the imaging sensor “high on the inner windshield
surface in an area which is normally swept clean by the action of the wiper
blades” would have been obvious because Bottesch expressly taught a
reason to do so, i.e., to “prevent[] the sensor tubes from becoming
inactivated by dust or other contaminants within the vehicle.” Pet. 37-38
(internal citations omitted). Thus, the fact that we reached different
conclusions as to claims 9 and 16 is not indicative of error when the claims
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differ and TRW advanced entirely different obviousness arguments as to
each claim.
Second, TRW argues that its reason to combine Bottesch with the
other references “is not . . . merely conclusory,” because “Bottesch teaches
the advantage of determining a background level of light.” Reh’g Req. 10.
Again, TRW did not make this argument in its Petition. We do not consider
arguments impermissibly raised for the first time in a rehearing request.
Moreover, even if we were to consider it, we would not find this argument
persuasive. Setting aside the issue whether this assertion, if true, adequately
supports an obvious-to-try rationale, the statement itself is unsupported. The
evidence that TRW cites to support its assertion that “Bottesch teaches the
advantage of determining a background level of light”
11
merely describes
Bottesch’s ambient light sensor, but does not discuss the advantages of using
it. See Ex. 1010, abstract, 4:44-49.
D. Claim 12
Claim 12 depends from claim 1 and additionally recites “wherein said
image sensing system determines an environment in which the vehicle is
being driven, and wherein said image sensing system adjusts control of a
headlamp of the vehicle in response to said determination of the
environment in which the vehicle is driven.” In its Petition, TRW relied on
Tadashi—which describes a tunnel-detecting apparatus for an automobile
that turns the automobile’s lights on when a tunnel is detected—as teaching
this additional limitation. Pet. 39. TRW asserted that “[t]hough Tadashi
utilizes a one-dimensional imaging array, Tadashi explains in detail that

11
TRW cites to page 37 of its Petition, which in turn cites to the abstract and
column 4, lines 44-49 of Bottesch. Reh’g Req. 10.
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tunnel detection is possible using two dimensional arrays.” Id. According
to TRW, “[u]sing two dimensional arrays [as Tadashi teaches] would be
tantamount to using known techniques to improve similar devices in the
same way.” Pet. 40 (citing MPEP § 2141). In our Decision, we determined
that TRW’s reason to combine Tadashi with the other references was
“conclusory” and “unsupported by a rational underpinning or record
evidence.” Dec. 21.
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TRW now argues that this determination constitutes an abuse of
discretion. Reh’g Req. 10-11. TRW asserts that the “combination is
supported by a detailed discussion of tunnel detection.” Id. at 10 (citing Pet.
39-40). But this “detailed discussion” merely amounts to assertions that (1)
Tadashi detects tunnels, and turns on the vehicle headlamps when a tunnel is
detected; and (2) though Tadashi utilizes a one-dimensional imaging array,
Tadashi explains that tunnel detection is “possible” using two-dimensional
arrays. These assertions do not explain why a person of ordinary skill in the
art would have combined Tadashi’s tunnel detection with Yanagawa’s
device. TRW further argues that its position is supported by Dr. Miller. Dr.
Miller states that “[i]t would be obvious to include environment detection,
such as detecting a tunnel environment, as specifically taught within Tadashi
in the system of Yanagawa.” Ex. 1014 ¶ 44. It is well within our discretion
not to credit conclusory, unsupported expert testimony such as that provided

12
Indeed, TRW did not assert in the Petition that it would have been obvious
to combine Tadashi’s tunnel-detection with Yanagawa and the other
references, but rather its discussion of two-dimensional arrays. See Pet. 40
(“Using two dimensional arrays would be tantamount to using known
techniques to improve similar devices in the same way.”).
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by Dr. Miller in this instance. See 37 C.F.R. § 42.65(a); Rohm and Haas Co.
v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).
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IV. ORDER
For the foregoing reasons, it is
ORDERED that TRW’s Request for Rehearing is denied.

13
TRW also points us to Dr. Miller’s testimony that “it would be reasonable
to use the environment detection of Tadashi, which utilizes a one-
dimensional imaging array, even though the claims are directed towards a
two dimensional array because it would require little experimentation to
implement tunnel detection on a two dimensional array.” Reh’g Req. 11
(quoting Ex. 1014 ¶ 44). But TRW does not explain how requiring “little
experimentation to implement tunnel detection on a two-dimensional array”
supports a reason to combine Tadashi “in the system of Yanagawa” (Ex.
1014 ¶ 44), particularly when, as TRW has admitted (Pet. 23), Yanagawa
does not teach using a two-dimensional imaging array.
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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