Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`
`
`
`Paper 7
`Date: February 10, 2015
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE U.S. LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01351
`Patent 8,513,590 B2
`____________
`
`Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`CALVE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`
`
`
`Paper 7
`Date: February 10, 2015
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE U.S. LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01351
`Patent 8,513,590 B2
`____________
`
`Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`CALVE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2014-01351
`Patent 8,513,590 B2
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`BACKGROUND
`I.
`Petitioner TRW Automotive U.S. LLC (“TRW”) has filed a Petition
`(Paper 1; “Pet.”) seeking inter partes review of claims 60, 61, 69–74, 77, 78,
`80, 83, 84, and 86–93 of U.S. Patent No. 8,513,590 B2 (Ex. 1002; “the ’590
`patent”). Patent Owner Magna Electronics Inc. (“Magna”) has filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that 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 that follow, and based on the
`current record, we determine that TRW has established a reasonable
`likelihood that it will prevail with respect to at least one challenged claim.
`A. Related Proceedings
`The parties inform us that the ’590 patent is the subject of co-pending
`district court case titled Magna Electronics Inc. v. TRW Automotive
`Holdings Corp., Case 1:13-cv-00324 (W.D. Mich.). Pet. 3; Paper 5, 3.
`B. The ’590 Patent (Ex. 1002)
`The ’590 patent discloses a vehicle interior mirror assembly with
`housing 10, front end 12 of which attaches to a mounting button (not shown)
`on an interior surface of windshield 22. Ex. 1002, 3:23–29 and 2:37–42;
`Fig. 2. Housing 10 is divided into two parts by internal wall 16. Id. at 3:29–
`31. First compartment 18 contains rain sensor 26, which is biased by steel
`spring 28 through an opening in the mounting button into optical contact
`with windshield 22. Id. at 5:62–6:2. Second compartment 20 has at least
`one electrical component (e.g., circuit board 30 and compass sensor). Id. at
`6:7–12; Fig. 8. Figure 2, reproduced below, illustrates these features.
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`Figure 2 is a cross-section through the mirror assembly of Figure 1.
`Rear end 14 of housing 10 has integral ball 32 for releasably and
`adjustably mounting rearview mirror unit 34 in a conventional manner. Id.
`at 6:13–15. Removable cover 40 mates with housing 10 around opening 20a
`of housing 10 and extends along windshield 22 to vehicle header 24. Id. at
`6:54–55; Figs. 2, 7. Removable cover 40 protects compartment 20 and
`component 30 against ingress of dust and other contaminants, and provides a
`conduit for electrical leads 62, 64, 66 from rain sensor 26, component 30,
`and electro-optic or other electrically operated mirror 38. Id. at 7:18–20. A
`camera (not shown) may be located on the housing or mirror unit or cover
`and arranged to look forwardly or rearwardly relative to the motion of the
`vehicle, or in another desired direction.1 Id. at 7:47–50.
`
`
`1 The ’590 patent claims priority to numerous parent applications. Ex. 1002,
`col. 1, ll. 9–37. Disclosure of the camera first appears in the parent U.S.
`Application No. 09/433,467, which was filed on November 4, 1999, and
`issued as U.S. Patent No. 6,326,613 B1.
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`C. Illustrative Claim
`Claims 60, 78, and 83 are independent. Claim 60 is illustrative of the
`claimed subject matter, and is reproduced below:
`60. An accessory system for a vehicle, said accessory
`system comprising:
`a windshield of a vehicle equipped with said accessory
`system;
`a receiving structure attached at an in-cabin surface of said
`windshield, wherein said receiving structure comprises a
`contiguous structure;
`a structure attached at said receiving structure, wherein said
`structure comprises a portion that attaches at said
`receiving structure;
`wherein, with said structure attached at said receiving
`structure, a cluster of individual sensors resides on or
`near said in-cabin surface of said windshield, and
`wherein said cluster of individual sensors includes a
`forwardly-viewing camera;
`wherein said cluster of individual sensors further includes at
`least one selected from the group consisting of (i) a rain
`sensor, (ii) a compass sensor, (iii) a vehicle altitude
`sensor, (iv) a vehicle incline sensor, (v) a headlight
`intensity sensor, (vi) a daylight intensity sensor and (vii)
`a geographic positioning satellite sensor; and
`wherein at least one of (i) said structure is detachably
`attached at said receiving structure and (ii) said structure
`is attached at said receiving structure via a breakaway
`attachment.
`
`
`
`D. The Prior Art
`TRW relies on the following references:
`Reference
`Patent/Printed Publication
`Blank
`U.S. Patent No. 5,708,410
`Schofield
`U.S. Patent No. 4,930,742
`Carter
`U.S. Patent No. 5,667,896
`
`Date
`Jan. 13, 1998
`June 5, 1990
`Sept. 16, 1997
`
`Exhibit
`1005
`1006
`1008
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`Patent/Printed Publication
`Reference
`U.S. Patent No. 5,602,457
`Anderson
`U.S. Patent No. 5,096,287
`Kakinami
`Klappenbach U.S. Patent No. 5,710,633
`
`Date
`Feb. 11, 1997
`Mar. 17, 1992
`Jan. 20, 1998
`
`
`
`Exhibit
`1009
`1010
`1011
`
`§ 103
`
`86, 92
`
`E. The Asserted Grounds of Unpatentability
`TRW challenges the patentability of claims 60, 61, 69–74, 77, 78, 80,
`83, 84, and 86–93 of the ’590 patent on the following grounds:
`Reference(s)
`Basis
`Claims Challenged
`Blank, Kakinami, Schofield
`§ 103
`60, 61, 70–74, 77
`Blank, Kakinami, Schofield,
`§ 103
`69, 78, 80, 83, 84, 87–91, 93
`Carter, Anderson
`Blank, Kakinami, Schofield,
`Carter, Anderson, Klappenbach
`II. ANALYSIS
`Real Parties-In-Interest
`A.
`Petitioner identifies “TRW Automotive U.S. LLC of Farmington
`Hills, Michigan” as the sole real party-in-interest. Pet. 2.
`Magna asserts that TRW “has made statements that call into question
`the true identities” of the real parties-in-interest; therefore the requirements
`of 35 U.S.C. § 312(a)(2) have not been met. Prelim. Resp. 3. Magna also
`contends that TRW “muddies the issue” by identifying “TRW Automotive
`Holdings Corp.” and “TRW Vehicle Safety Systems Inc.” as co-defendants
`in related litigation. Id. at 4. Magna asserts that TRW Automotive Holdings
`Corp. is the ultimate parent corporation of Petitioner TRW Automotive US
`LLC and “undoubtedly exhibits a significant measure of control over TRW
`Automotive U.S. LLC.” Id. According to Magna, the fact that the Annual
`Report of TRW’s parent corporation discusses TRW’s financial position and
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`operating results “suggests a tight financial integration” between the two
`companies. Id. at 5. Magna does not clarify whether it is arguing that TRW
`Automotive Holdings Corp. and TRW Vehicle Safety Systems Inc. are real
`parties-in-interest, or whether it is arguing that only TRW’s parent company,
`TRW Automotive Holdings Corp., is a real party-in-interest. We address the
`merits of Magna’s assertions for both companies.
`A petition for inter partes review (IPR) may be considered only if,
`inter alia, “the petition identifies all real parties in interest.” 35 U.S.C.
`§ 312(a)(2). The Office Patent Trial Practice Guide provides guidance as to
`factors to consider in determining whether a party is a real party-in-interest.
`77 Fed. Reg. 48,756, 48,759–48,760 (Aug. 14, 2012) (“Trial Practice
`Guide”). Considerations include whether a non-party “funds and directs and
`controls” an IPR petition or proceeding. Id. at 48,760. Additional factors
`include: the non-party’s relationship with the petitioner; the non-party’s
`relationship to the petition itself, including the nature and/or degree of
`involvement in the filing; and the nature of the entity filing the petition. Id.
`Generally, a party does not become a “real party-in-interest” merely through
`association with another party in an unrelated endeavor. Id. A party is not
`considered a real party in interest in an IPR solely because it is a joint
`defendant with a petitioner in a patent infringement suit or part of a joint
`defense group with a petitioner. Id.
`Whether a party who is not a named participant in a given proceeding
`is a “real party-in-interest” to that proceeding “is a highly fact-dependent
`question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke
`the term “real party-in-interest” to describe relationships and considerations
`sufficient to justify applying principles of estoppel and preclusion. Id.
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`A non-party’s participation with a petitioner may be overt or covert,
`and the evidence may be direct or circumstantial, but the evidence as a
`whole must show that the non-party possessed effective control over the
`petitioner from a practical standpoint. Zoll Lifecor Corp. v. Philips Elec. N.
`Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014)
`(Paper 15). Accordingly, we look to the evidence on which Magna relies to
`determine the fact dependent issue of whether TRW Automotive Holdings
`Corp. and TRW Vehicle Safety Systems Inc. are real parties-in-interest in
`this proceeding.
`Magna speculates about what the evidence “undoubtedly exhibits” or
`“suggests” concerning the relationship of TRW to its parent corporation,
`TRW Automotive Holdings Corp. Prelim. Resp. 4–5. This speculation is
`based on general evidence of a parent/subsidiary relationship in a required
`Annual Report (Form 10-K) submitted to the U.S. Securities and Exchange
`Commission (Ex. 2002). The statement in the Annual Report that TRW
`Automotive Holdings Corp. “conduct[s] substantially all of [its] operations
`through subsidiaries” (Ex. 2002, at 0005) is not persuasive or sufficient
`evidence to establish “an involved and controlling parent corporation
`representing the unified interests of itself and Petitioner,” as found in Zoll.
`IPR2013-00609, Paper 15 at 12.
`In RPX Corp. v. Virnetx, Inc., Case IPR2014-00171 slip op at 6–10
`(PTAB June 23, 2014) (Paper 52), the Board discussed a number of factors
`to determine whether the petitioner, RPX, was a proxy for a non-party.
`Those factors include whether the petitioner is compensated by the non-
`party for filing the petition; whether the petitioner was authorized, explicitly
`or implicitly, by the non-party to file the petition or to represent the non-
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`party in the IPR; and whether the petitioner is a “nominal plaintiff” with “no
`substantial interest” in the IPR challenge. Id. at 7–10. Unlike the facts in
`RPX, based on the record before us, there is no persuasive evidence that
`TRW is acting as a proxy for TRW Automotive Holdings Corp.
`Magna has not directed us to any evidence establishing a real party-in-
`interest relationship between TRW and TRW Vehicle Safety Systems Inc.,
`other than TRW’s identification of TRW Vehicle Safety Systems Inc. as
`“related” and a co-defendant in a pending lawsuit. In Denso Corp. v.
`Beacon Navigation GmbH, Case IPR2013-00026, slip op. at 10–11 (PTAB
`Mar. 14, 2014) (Paper 34), the Board determined that the mere fact that
`parties are co-defendants or concurrent defendants in litigation does not
`make them real parties-in-interest. In Denso, as here, there was no
`persuasive evidence that the non-party engaged in strategic planning,
`preparation, and review of the IPR petition. Magna’s speculation suggesting
`that TRW Vehicle Safety Systems Inc. is a real party in interest in this
`proceeding has no persuasive evidentiary support.
`TRW’s identification of the two other TRW entities as “related to
`Petitioner” (Pet. 3) does not contradict TRW’s identification of the sole real
`party-in-interest in this proceeding. Magna’s speculation about the motives
`of TRW, i.e., that TRW “appears to be attempting to evade the estoppel
`effect” of this proceeding (Prelim. Resp. 5), also is unpersuasive.
`Accordingly, based on the evidence before us, Magna fails to establish
`that either TRW Automotive Holdings Corp. or TRW Vehicle Safety
`Systems Inc. is a real party-in-interest in this proceeding.
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`Claim Interpretation
`B.
`In an inter partes review, claims of an unexpired patent are given their
`broadest reasonable construction in light of the specification of the patent in
`which they appear. 37 C.F.R. § 42.100(b); see also Trial Practice Guide, 77
`Fed. Reg. at 48,766. Claim terms are given their ordinary and customary
`meaning as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`
`1. “bus communication”
`TRW asserts that the term “bus communication” should mean “a set
`of signal lines used by an interface system, to which a number of devices are
`connected, and over which information is transferred between the devices.”
`Pet. 9–10 (citing IEEE Standard 696). Magna does not offer a construction
`for this term. On this record, we adopt TRW’s construction, which appears
`to be consistent with the use of this term in claim and specification.
`2. “cluster of individual sensors”
`We construe the term “cluster of individual sensors” to mean “a group
`of individual sensors that are close together” as proposed by the parties,
`which offer similar constructions. See Pet. 6–7; Prelim. Resp. 11–12.
`
`Asserted Grounds of Unpatentability
`C.
`1. Obviousness of Claims 60, 61, 70–74, and 77
`Over Blank, Kakinami, and Schofield
`a. Overview of Blank (Ex. 1005)
`Blank discloses a vehicle information display concealed substantially
`by a rear view mirror and viewable by a vehicle operator. Ex. 1005, 1:15–
`18; Figs. 1, 2, 3A, 3B. Figures 1, 2, and 3B of Blank are reproduced below.
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`Figure 1 is an interior view of a display mounted behind a rearview
`mirror. Figure 2 is a sectional view taken along line II-II of Figure 1.
`
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`Figure 3B is a side elevation view of an interior rearview mirror and
`information display assembly secured to a windshield-mounted button.
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`Blank discloses rearview mirror assembly 24 that is connected by
`support arm 42 to mount 44, which, in turn, is fastened to inner surface 46 of
`windshield 22 by conventional double-tapered mounting button 70. Id. at
`5:10–12, 6:11–13. Mount 44 includes coupler body 80 that is adapted to
`receive button 70 in a sliding fashion during installation to retain mount 44
`on button 70. Id. at 6:34–58. Housing 110 includes upper portion 114
`coupled detachably to lower portion 118. Id. at 7:25–26. Upper portion 114
`includes attachment member 112 that extends from upper housing portion
`114 and includes wall 160 defining cavity 162 for receiving coupler body 80
`to couple housing 110 to button 70. Id. at 6:64–67; 8:5–23; Figs. 4B, 6–8.
`Circuit board 150 is located within housing 110 and is configurable as
`a standalone compass, or a display for a clock, odometer, speed indicator,
`hazard warning indicator, turn indicator, thermometer (interior and exterior),
`a trip computer, a global positioning satellite system, a cellular telephone, a
`supplemental vision system (such as camera, sonar, infrared, and microwave
`detection), and/or warning lights (such as a low fuel indicator). Id. at 7:46–
`59. Display 154 is coupled to circuit board 150 and may be analog, digital,
`or both, and may display compass information. Id. at 7:59–66; Fig. 4B.
`b. Overview of Kakinami (Ex. 1010)
`Kakinami discloses a video camera mounted in an automobile to take
`pictures of scenes ahead of the automobile. Ex. 1010, 1:5–8; Fig. 2a. As
`shown in Figure 2a, video camera 20 is mounted in arm 11 that also supports
`rear view mirror 1. Id. at 2:15–16. Cable 17 from signal processing unit 16
`of video camera 20 extends through passage 12 into a space between vehicle
`roof 2 and ceiling 4 and is connected to an image processing device (not
`shown). Id. at 2:26–32. Figure 2a is reproduced below.
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`Figure 2a is a cross-sectional view of the vehicle with video camera.
`c. Overview of Schofield (Ex. 1006)
`Schofield discloses a rearview mirror accessory mount with mounting
`adaptor 90 and receptacle 120 that house sensors such as headlight dimming
`sensor 130. Ex. 1006, 8:35–58. Figures 13 and 15 are reproduced below.
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`Figure 13 is a perspective view of rearview mirror mounting adaptor
`with a receptacle support for a vehicle accessory. Figure 15 is a side view of
`the mounting adaptor of Figure 13. Receptacle 120 may support accessories
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`such as compass sensor, radar detector, information display, garage door
`opener, rain sensor, or navigation receiver. Id. at 9:27–41.
`d. Analysis
`TRW contends that claims 60, 61, 70–74, and 77 are unpatentable
`under 35 U.S.C. § 103(a) over Blank, Kakinami, and Schofield. For reasons
`that follow, TRW has demonstrated a reasonable likelihood of prevailing
`with respect to its challenge of claims 60, 61, 70–74, and 77.
`Regarding independent claim 60, TRW asserts that Blank discloses a
`button 70 that corresponds to the claimed receiving structure and is attached
`at an in-cabin surface of windshield 22 by front surface 71 that is adapted to
`adhere to interior surface 46 of windshield 22 using a suitable adhesive. Pet.
`18 (citing Ex. 1005, 611–20 and Ex. 1012 ¶ 33).2 Dr. Kazerooni states that
`button 70 would be understood to be equivalent to the claimed receiving
`structure, and button 70 is a contiguous structure that is made from a single
`piece. Ex. 1012 ¶ 33. TRW also asserts that Blank discloses housing 110 as
`structure that couples to mount 70 via coupler body 80; therefore, housing
`110 is equivalent to the claimed structure, and coupler body 80 is equivalent
`to the portion of the structure that attaches to the receiving structure. Pet. 19
`(citing Ex. 1012 ¶¶ 33, 35).
`TRW contends that Blank suggests a cluster of sensors by claiming a
`circuit comprising “at least one device” selected from a number of options
`including compasses, odometers, clocks, trip computers, global positioning
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`2 As Magna points out (Prelim. Resp. 16), TRW’s citations to Exhibit 1013
`appear to be directed to the Declaration of Homayoon Kazerooni, which was
`entered as Exhibit 1012. We treat all citations to Exhibit 1013 in the Petition
`as citations to the Kazerooni Declaration, which is Exhibit 1012.
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`systems, cellular telephones, supplemental vision systems, warning lights,
`turn indicators, hazard warning indicators, and speed indicators, and by
`disclosing that circuit board 150 may be configured for any number of other
`displays such as a clock, thermometer, GPS, supplemental vision system.
`Pet. 19 (citing Ex. 1005, 7:53–59 and 11:26–32 (claim 5)). TRW asserts that
`Schofield discloses that support 120 may be used or modified to support
`other vehicle accessories, such as a compass sensor, radar detector, rain
`sensor, and navigation system receiver. Pet. 19–20 (citing 1006, 9:24–41).
`Dr. Kazerooni states that Blank’s recital of “at least one device” in claim 5
`would be understood to suggest that multiple components may be used
`together, and Schofield discloses how such additional clustering may be
`done. Ex. 1012 ¶¶ 41–42 & n. 6. Dr. Kazerooni states that a skilled artisan
`would understand Schofield’s disclosure of support 120 being used to
`support other vehicle accessories, such as a compass sensor, radar detector,
`keyless entry system, vehicle security identification, rain sensor, and
`navigation system receiver, as teaching a sensor cluster. Id.
`Magna asserts that Blank does not disclose a structure with a portion
`that attaches to the receiving structure, as recited in claims 60, 78, and 83.
`Prelim. Resp. 14–15. Magna asserts that housing 110 of Blank, which TRW
`treats as the claimed structure, does not attach to button 70, which TRW
`identifies as the receiving structure. Id. at 15. Magna contends that housing
`110 instead attaches to coupler body 80 and couples to mount 70 via coupler
`body 80. Id. at 15–16; see Pet. 19. This argument is not persuasive as TRW
`treats housing 110 and coupler body 80 as the claimed structure and coupler
`body 80 as the portion of the structure that attaches at the receiving structure
`(i.e., at mounting button 70), as claimed. Pet. 19. Dr. Kazerooni identifies
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`coupler body 80 as the portion of the structure that slidingly receives button
`70 during installation. Ex. 1012 ¶¶ 33, 35 (citing Ex. 1005, 6:34–63); see
`Pet. 19 (citing Ex. 1005, 6:34–63). Dr. Kazerooni also identifies housing
`110 as including portions 114, 118 that surround electronics such as circuit
`board 150. Id. ¶ 32. Blank also discloses that upper wall 120 of housing
`110 includes clip 112 that defines cavity 162 for receiving coupler body 80.
`Ex. 1005, 8:5–8; Figs. 4A, 6.
`Magna asserts that there is no disclosure of sensors disposed in
`module 26 of Blank, much less a camera sensor. Prelim. Resp. 30. Magna
`also asserts that TRW has failed to explain how the teachings of Schofield
`combine with Blank. Id. at 30–31.
`Magna’s arguments are not persuasive in view of Dr. Kazerooni’s
`statement that a skilled artisan would understand from Blank’s suggestion
`that electronics module 26 may contain a variety of electronics, and Blank’s
`claim of a circuit that comprises at least one device in claim 5, that Blank’s
`module can accommodate multiple devices. Ex. 1012 ¶ 42. Dr. Kazerooni
`also states that a skilled artisan would include a cluster of sensors, as taught
`by Schofield, in Blank’s module 26 instead of above and below the adaptor
`as taught by Schofield. Id. ¶ 43. TRW relies on these teachings of Blank
`and Schofield, as understood by a skilled artisan in view of Dr. Kazerooni’s
`Declaration, to assert that a skilled artisan would understand that Blank’s
`module 26 can be modified to include a plurality of sensors and would have
`been motivated to modify Blank, which claims its module can accommodate
`at least one sensor, in view of Schofield’s teachings, to include a plurality of
`sensors. Pet. 20–21. TRW asserts that the combination combines known
`elements according to known methods for predictable results. Id. at 21.
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`Magna also contends that Kakinami is not combinable with Blank
`because Kakinami is directed to a video camera mounted to take pictures of
`scenes ahead of the vehicle, whereas Blank is directed to vehicle information
`displays that are viewable by a vehicle operator and passengers. Prelim.
`Resp. 31–32. Magna asserts that Blank discusses different types of displays,
`but Blank makes no suggestion of putting a camera or other device in the
`module. Id. at 33. Magna contends that a camera of Blank’s supplemental
`vision system of Blank may be located elsewhere, such as the rear of the
`vehicle as a backup assist system. Id. Magna also asserts that Kakinami’s
`camera is located in the mirror arm of a header-mounted mirror assembly
`above the mirror, rather than in a module that is attached to mirror mount of
`a windshield-mounted mirror assembly, as in Blank. Id. at 34–35. Magna
`contends that there is no indication of an opening in housing 110 of Blank’s
`module 26 through which a camera could view. Id. at 35.
`Magna’s arguments are not persuasive in view of TRW’s contentions.
`TRW asserts that Blank strongly suggests the use of a camera by disclosing
`that circuit board 150 may be configured for a supplemental vision system
`that includes a camera. Pet. 22. Dr. Kazerooni states that Blank discloses
`that the electronics module may contain circuitry for a supplemental vision
`system that includes a camera, but does not disclose expressly a forward
`facing camera with a field of view through the vehicle windshield. Ex. 1012
`¶¶ 31, 36. TRW asserts that Kakinami discloses expressly a video camera
`mounted in arm 11 that also supports rearview mirror 1 and inclusion of this
`video camera 20 in module 26 of Blank would amount to combining prior
`art elements according to known methods to yield predictable results. Pet.
`22–23. TRW further asserts that a skilled artisan would have modified
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`Blank’s module 26 to include Kakinami’s camera 20 such that the camera
`was facing forward and functioning in the manner described in Kakinami.
`Pet. 23. TRW cites Dr. Kazerooni’s Declaration to support its contentions.
`Id.; see Ex. 1012 ¶ 37. Dr. Kazerooni declares that Kakinami teaches a
`camera in a module on a mirror mount (similar to Blank’s module 26) and a
`skilled artisan could have modified Blank’s module 26 to include
`Kakinami’s camera 20 facing forward, as described in Kakinami, to yield
`predictable results by incorporating signal processing unit 16 of Kakinami’s
`camera 20 into Blank’s circuit board 150. Ex. 1012 ¶¶ 37–38.
`Magna also asserts that TRW’s Petition defines a person of ordinary
`skill in the art differently than Dr. Kazerooni. Prelim. Resp. 8–9. Magna
`asserts that the Petition defines a skilled artisan as someone with “at least the
`qualifications of or equivalent to either a undergraduate degree in electrical
`engineering or mechanical engineering with course work or research in
`automobile accessory systems with at least two years of work making
`automobile accessory systems.” Id. at 8 (citing Pet. 17). Magna contends
`that Dr. Kazerooni defines a person of ordinary skill in the art as someone
`with “at least the qualifications or equivalent to an undergraduate degree in
`mechanical engineering with at least two years of work adapting computer
`vision systems for mounting in automobiles.” Id. (citing Ex. 1012 ¶ 10).
`Dr. Kazerooni’s Declaration provides two definitions of a person of
`ordinary skill in the art. Dr. Kazerooni states that:
`In view of at least the types of problems encountered in
`the art, the prior art solutions to those problems and the high
`sophistication of the technology, all as addressed herein, it is
`submitted that the person of ordinary skill in the art of the ’590
`Patent at the time of the invention would have had at least the
`qualifications of or equivalent to either a undergraduate degree
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`17
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`in electrical engineering or mechanical engineering with course
`work or research in automobile accessory systems with at least
`two years of work making automobile accessory systems.
`
`Ex. 1012 ¶ 30. This discussion appears in Dr. Kazerooni’s Declaration in a
`section entitled “LEVEL OF ORDINARY SKILL.” Ex. 1012 ¶¶ 29–30.
`This definition of a skilled artisan in paragraph 30 immediately precedes Dr.
`Kazerooni’s discussion of the “STATE OF THE ART IN THE RELEVANT
`TIMEFRAME.” See Id. ¶¶ 31–48. This definition of a skilled artisan in
`paragraph 30 of Dr. Kazerooni’s Declaration matches TRW’s definition of a
`skilled artisan in the Petition and is cited as the basis of TRW’s definition of
`a skilled artisan. See Pet. 17 (citing Ex. 1012 ¶¶ 29–30); Ex. 1012 ¶ 30.
`Another definition of a skilled artisan appears in Dr. Kazerooni’s
`Declaration in a section entitled “SUMMARY OF OPINIONS.” Ex. 1012
`¶ 10. It is unclear what use, if any, is made of this definition of a skilled
`artisan. For purposes of this decision, and at this stage of the proceeding, we
`understand TRW and Dr. Kazerooni to assert the same definition of a skilled
`artisan, which definition appears at page 17 of the Petition and paragraph 30
`of Dr. Kazerooni’s Declaration.
`Regarding claim 61, which depends from claim 60 and recites that
`“said contiguous receiving structure comprises a contiguous perimetal
`portion,” TRW asserts that Blank teaches that button 70 can be made of
`materials such as sintered metal, engineering plastic, zinc, or aluminum.
`Pet. 27. TRW also contends that Blank discloses a contiguous receiving
`structure in that button 70 is made from a single piece and includes front and
`rear surfaces 71, 72. Id. at 18–19. TRW cites the Kazerooni Declaration to
`support this assertion. Id. at 19. Dr. Kazerooni states that button 70 is a
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`contiguous structure as it is made from a single piece in a similar manner to
`the embodiment disclosed in the ’590 patent as “contiguous” at column 5,
`lines 21–31. Ex. 1012 ¶ 33 (cited in Pet. 19).
`Magna asserts that TRW appears to have interpreted “perimetal” to
`mean “metal” and has ignored the “peri” part of the term. Prelim. Resp. 28.
`Magna contends that it is clear from the specification of the ’590 patent that
`“a contiguous perimetal portion is a contiguous perimeter or circumscribing
`portion about an aperture.” Id. (citing Ex. 1002, 5:21–31). Magna asserts
`that TRW has not provided a proper interpretation of this term and has failed
`to specify where this element is found in the prior art. Id.
`Magna’s arguments are not persuasive. We interpret “contiguous
`perimetal portion” in claim 61 to mean “a part with a continuous perimeter
`or circumferential portion.” This meaning is consistent with the ’590 patent
`specification, which discloses that a non-contiguous mounting member can
`comprise two spaced apart rails attached to the windshield. Ex. 1002, 5:25–
`26. TRW asserts that Blank discloses such features in button 70, which is
`made from a single piece with generally planar front 71 and rear 72 surfaces.
`Pet. 18–19. Blank discloses button 70 as a single piece with continuous side
`surfaces 75, 76 shown in Figure 4A. See Ex. 1005, 6:13–15. Dr. Kazerooni
`states that button 70 of Blank is a contiguous structure that is made from a
`single piece in a similar manner to the embodiment described in the ’590
`patent as being “contiguous.” Ex. 1012 ¶ 33.
`Dependent claim 70 recites that at least one of said individual sensors
`“(a) receives an input via a bus communication and (b) delivers an output via
`a bus communication.” TRW asserts that Kakinami suggests, if not teaches,
`such a bus communication , where cable 17 from signal processing unit 16
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`extends through a narrow diameter portion of passage 12. Pet. 27. TRW
`asserts that a skilled artisan would understand that Kakinami’s cable 17, at
`very least, suggests a bus because it connects signal processing unit 16 to an
`image processing device (not shown), and thus, is equivalent to a bus under
`a broadest reasonable construction. Id. at 27–28 (citing Ex. 1012 ¶¶ 39–40).
`Dr. Kazerooni states that Kakinami discloses a bus communication because
`cable 17 extends from signal processing unit to an image processing device
`(not shown) for further processing, and a skilled artisan would understand
`that cable 17 at the very least suggests a bus communication to camera 20.
`Ex. 1012 ¶ 39 (citing Ex. 1006 2:26–32; Fig. 2a). Dr. Kazerooni states that a
`skilled artisan would modify Blank to include bus communication cable 17
`of Kakinami to operate camera 20 according to its desired functionality by
`sending image data to image processors for further processing. Id. ¶ 39.
`Magna contends that cable 17, as disclosed in Kakinami, is not a bus
`communication, and TRW’s assertion that Kakinami suggests a bus because
`cable 17 connects signal processing unit 16 to image processing device is
`conclusory. Prelim. Resp. 24–25. Magna also asserts that the Kazerooni
`Declaration is conclusory in stating that a skilled artisan would understand
`that cable 17 of Kakinami, at the very least, suggests bus communication to
`camera 20 because a bus communication is a specialized internal
`communications network that interconnects components inside a vehicle. Id.
`at 25. Magna further assert
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