Trials@uspto.gov Paper 7
`Tel: 571-272-7822
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` Entered: March 19, 2015
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`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 IPR2014-01497
`Patent 8,531,278 B2
`_______________
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Before JAMESON LEE, BARRY L. GROSSMAN, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
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`
`

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`IPR2014-01497
`Patent 8,531,278 B2
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`
`I. INTRODUCTION
`TRW Automotive US LLC (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1, 9, 12, 13, 17–22, and 24–40 of U.S. Patent
`No. 8,531,278 B2 (“the ’278 patent”). Paper 2 (“Pet.”). Magna Electronics Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We
`review the Petition under 35 U.S.C. § 314, which provides that 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.”
`Based on the record before us, we are persuaded that the information
`presented in the Petition and the Preliminary Response demonstrates a reasonable
`likelihood that Petitioner will prevail on the ground that claims 1, 9, 12, 13, and
`24–32 would have been obvious under 35 U.S.C. § 103(a) based on the cited
`references. We are not persuaded that there is a reasonable likelihood that
`Petitioner will prevail in establishing that claims 17–22 and 33–40 would have
`been obvious based on the cited references.
`A. Related Proceedings
`Petitioner states that the ’278 patent is involved in a pending district court
`case, Magna Electronics Inc. v. TRW Automotive Holdings Corp., No. 1:13-cv-
`00324 (W.D. Mich. 2013). Pet. 2.
`B. The ’278 Patent
`The ’278 patent is titled “Accessory System for Vehicle.” The ’278 patent
`discloses a system for mounting an electronics module to the windshield of a
`vehicle. Ex. 1002, col. 2, ll. 28–34. The electronics module houses an accessory,
`such as a camera, that has a forward-facing field of view through the windshield.
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`Id. at col. 2, ll. 12–13. Figure 1 from the ’278 patent, reproduced below, shows the
`basic components in the disclosed accessory system.
`
`
`
`FIG. 1 from the ’278 patent is a perspective view
`of an accessory module, as viewed through a windshield, when
`mounted at a windshield of a vehicle. Id. at col. 3, ll. 41–44.
`As shown in Figure 1, accessory module 10 includes carrier 12. Ex. 1002,
`col. 4, ll. 8–10. Carrier 12 receives and/or holds an accessory, such as imaging
`sensor 18 and lens 20. Id. at col. 4, ll. 16–19. Mounting element 14 is bonded or
`otherwise secured to an interior surface of a windshield of a vehicle, and
`configured to receive carrier 12 of the module. Id. at col. 4, ll. 28–30, 52–54. An
`“imaging sensor,” camera, or other accessory, is positioned within carrier 12 so
`that lens 20 is generally at the windshield and directed through the windshield
`when module 10 is attached to the windshield. Id. at col. 5, ll. 21–26. Carrier
`portion 12 includes an accessory mounting or holding portion 24 that protrudes
`upward from carrier portion 12 (as shown in Figure 6) for mounting the accessory
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`or accessories. Id. at col. 5, ll. 11–14. When the accessory is a camera, the camera
`lens may be angled to position the lens at a desired orientation, such as generally
`horizontally, relative to the windshield, which typically also is angled. Id. at col. 5,
`ll. 27–34. The ’278 patent also discloses that the accessory module may be
`positioned at or near an interior rearview mirror assembly of the vehicle. Id. at
`col. 11, ll. 12–16.
`
`C. Representative Claim
`Among the challenged claims, claims 1, 17, 24, 33, 36, and 40 are
`independent claims. Claim 40 is representative and is reproduced below.
`
`40. An accessory system for a vehicle, said accessory system
`comprising:
`
`a windshield, said windshield having an outer surface that is
`exterior of the vehicle when said windshield is mounted to a
`vehicle equipped with said accessory system and an inner surface
`that is interior of the vehicle when said windshield is mounted to
`the equipped vehicle;
` wherein said windshield is at an angle relative to vertical
`when said windshield is mounted to the equipped vehicle;
`
`a mirror mounting button adhesively attached at said inner
`surface of said windshield at a first location;
`
`an interior rearview mirror assembly mounted to said mirror
`mounting button;
` wherein said windshield has a mounting element adhesively
`attached at said inner surface at a second location;
`
`an accessory support adapted
`for mounting
`demounting from said mounting element;
` wherein said accessory support accommodates a lens and a
`CMOS photosensor array;
` wherein said CMOS photosensor array is disposed in said
`accessory support generally perpendicular to the longitudinal
`axis of said lens;
` wherein said accessory support is configured so that when
`mounted to said mounting element attached at said windshield,
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`to and
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`said lens has a field of view through said windshield appropriate
`for a driver assistance system of the equipped vehicle;
` wherein said lens has a generally horizontal forward field of
`view through said windshield when said accessory support is
`mounted to said mounting element attached at said windshield;
` wherein said driver assistance system comprises at least one
`of (i) an automatic headlamp control system of the equipped
`vehicle, (ii) a lane departure warning system of the equipped
`vehicle, (iii) an object detection system of the equipped vehicle,
`(iv) a traffic sign recognition system of the equipped vehicle,
`(v) a precipitation sensing system of the equipped vehicle and
`(vi) a collision avoidance system of the equipped vehicle;
` wherein, when mounted to said mounting element attached at
`said windshield, said accessory support is positioned behind an
`area of said windshield that is wiped by a windshield wiper of
`the equipped vehicle when said windshield wiper is activated;
`and
` wherein said accessory support comprises an electrical
`connector and wherein said electrical connector is configured for
`electrical connection to at least one of (i) an electrical source of
`the equipped vehicle, (ii) a power source of the equipped vehicle
`and (iii) a control of the equipped vehicle.
`
`Date
`Issued August 18, 1998
`
`Exhibit Number
`Ex. 1004
`
`D. References Relied Upon
`Petitioner relies upon the following prior art references:
`
`Reference
`Schofield ’094,
`U.S. Pat. No. 5,796,094
`Schofield ’742,
`U.S. Pat. No. 4,930,742
`
`Issued June 5, 1990
`
`Ex. 1005
`
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`E. The Asserted Ground
`Petitioner asserts that all the challenged claims would have been obvious
`under 35 U.S.C. § 103(a) based on the combined disclosures in Schofield ’094 and
`Schofield ’742. Pet. 2.
`
`II. ANALYSIS
`A. Real Parties in Interest
`In accordance with 37 C.F.R. § 42.8(b)(1), Petitioner identifies “TRW
`Automotive U.S. LLC of Farmington Hills, Michigan” as the sole real party in
`interest. Pet. 2. Petitioner also identifies “TRW Automotive Holdings Corp.” and
`“TRW Vehicle Safety Systems Inc.” as co-defendants in the related litigation
`identified by Petitioner and cited in Section I.A., above. Id. at 3. Petitioner also
`acknowledges that both co-defendants “are corporations related to Petitioner.” Id.
`Patent Owner asserts that “[b]ecause TRW has failed to identify TRW
`Automotive Holdings Corp. as a real-party-in-interest, the requirements of
`35 U.S.C. § 312(a)(2) have not been met.” Prelim. Resp. 1. Patent Owner states
`that TRW Automotive Holdings Corp. “is the ultimate parent corporation” of
`Petitioner (id.) and “undoubtedly exhibits a significant measure of control over its
`wholly-owned subsidiary TRW Automotive U.S. LLC” (id. at 5). According to
`Patent Owner, the fact that the Annual Report of Petitioner’s parent corporation
`discusses Petitioner’s financial position and operating results “suggests a tight
`financial integration” between the two companies. Id. at 6. Patent Owner also
`cites a statement in the Annual Report that the parent company “conduct[s]
`substantially all of our operations through subsidiaries” as further evidence of
`control by the parent over the subsidiary. Id. at 5 (citing Ex. 2004, 2 (alteration in
`original; emphasis omitted)).
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`Patent Owner also cites four press releases issued by TRW Automotive
`Holdings Corp. as evidence of the “full control” TRW Automotive Holdings Corp.
`exercises over Petitioner. Id. at 6 (citing Ex. 2005). These four press releases each
`contain the identical statement that “[a]ll references to ‘TRW Automotive’, ‘TRW’
`or the ‘Company’ in this press release refer to TRW Automotive Holdings Corp.
`and its subsidiaries, unless otherwise indicated.” Ex. 2005, 1, 4, 7, 10 (emphasis
`added).
`Patent Owner also argues that the common law firm and counsel
`representing TRW Automotive Holdings Corp. and Petitioner in the identified
`related litigation and also representing Petitioner in this inter partes proceeding is
`further evidence that Petitioner “acts under authorization of its corporate parent
`(TRW Automotive Holdings Corp.) and that [Petitioner] is acting as a proxy for
`TRW Automotive Holdings Corp.” Prelim. Resp. 7.
`A petition for inter partes review 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 regarding factors to consider in
`determining whether a party is a real party in interest. 77 Fed. Reg. 48,756,
`48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party
`“funds and directs and controls” an IPR petition or proceeding. Id. at 48,760.
`Additional relevant 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 also
`is not considered a real party in interest in an inter partes review solely because it
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`is a joint defendant with a petitioner in a patent infringement suit or is part of a
`joint defense group with a petitioner in the suit. 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 conventional principles of estoppel and preclusion. Id.
`The 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 relating to
`the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case
`IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). Accordingly, we
`look to the evidence as a whole on which Patent Owner relies to determine the fact
`dependent issue of whether TRW Automotive Holdings Corp. is a real party-in-
`interest in this proceeding.
`Patent Owner argues (Prelim. Resp. 5–6) about what the evidence
`“undoubtedly exhibits” or “suggests” concerning the relationship of Petitioner to
`its parent corporation, TRW Automotive Holdings Corp. These arguments are
`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. 2004). The fact that this Annual Report states generally that the parent
`company “conduct[s] substantially all of [its] operations through subsidiaries”
`(Ex. 2004, 2) is not persuasive evidence to establish sufficient opportunities “to
`control all aspects of Petitioner’s business, including controlling this inter partes
`review,” as found in Zoll. Zoll, Paper 15, 11 (emphasis added). The one sentence
`on which Patent Owner relies from the 154-page Annual Report does not suggest
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`that Petitioner performs no business and engages in no activity other than that
`dictated by its corporate parent. On the record before us, we are not persuaded that
`the totality of the evidence establishes that TRW Automotive Holdings Corp. is
`“an involved and controlling parent corporation representing the unified interests
`of itself and Petitioner,” as found in Zoll. Id. at 12.
`In RPX Corp. v. Virnetx, Inc., Case IPR2014-00171, slip op. at 6–10 (PTAB
`June 23, 2014) (Paper 52),1 the Board discussed a number of factors to determine
`whether petitioner RPX was a proxy for a non-party. Those factors included
`whether the petitioner was 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-party in the inter partes review; and
`whether the petitioner was 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 Petitioner here is acting as a proxy
`for TRW Automotive Holdings Corp.
`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 inter partes review petition.
`The fact that Petitioner and its parent corporation share counsel in litigation,
`and that the same counsel has entered an appearance in this inter partes review
`
`
`1 In RPX, the parties submitted a proposed redacted version (Paper 52) of the
`Board’s decision. In Paper 53, the Board entered the redacted decision and ordered
`that the redacted decision (Paper 52) would be available to the public.
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`proceeding does not establish the parent corporation’s ability to control Petitioner’s
`conduct in this proceeding. Syntroleum Corp. v. Neste Oil Oyj, Case IPR2013-
`00178, slip op. at 7 (PTAB Sept. 4, 2014) (Paper 22). See also Zoll, Paper 15, 12
`(“common counsel alone is not dispositive of control”). Unlike the facts in Zoll,
`the evidence before us does not establish that Petitioner’s actions “have blurred
`sufficiently the lines of corporate separation with its parent,” such that the parent
`corporation “has had control, or could have controlled Petitioner, in all aspects of
`its business,” which would include the aspects of its business relating to the inter
`partes review. Id.
`Petitioner’s identification of its co-defendants as “related to Petitioner”
`(Pet. 3) does not contradict Petitioner’s identification of the sole real party-in-
`interest in this proceeding.
`The totality of the evidence before us does not establish anything other than
`a traditional parent/subsidiary business relationship. This common form of
`conducting business, without more, does not establish a relationship sufficient to
`make the parent a real party-in-interest, or the subsidiary a privy of the parent, in
`this inter partes review. The generic references to the existence of a
`parent/subsidiary business relationship in SEC documents and the statements in
`press releases on which Patent Owner relies do not establish or suggest that the
`parent funds, directs, or controls the IPR petition or proceeding, or that the
`subsidiary is a proxy for the parent. There is no persuasive evidence that the
`parent has any control over the Petition itself or over Petitioner’s role in this
`proceeding. Accordingly, based on the totality of the evidence before us, Patent
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`Owner fails to establish that TRW Automotive Holdings Corp. should have been
`identified as a real party-in-interest in this proceeding.2
`B. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be given its
`broadest reasonable construction in light of the specification of the patent in which
`it appears.” 37 C.F.R. § 42.100(b); see also 77 Fed. Reg. at 48,764, 48,766 (Claim
`Construction); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
`2004); In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667, at *5–
`*8 (Fed. Cir. Feb. 4, 2015). “[W]hen interpreting a claim, words of the claim are
`generally given their ordinary and accustomed meaning, unless it appears from the
`specification or the file history that they were used differently by the inventor.” In
`re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Any special definition for a
`claim term must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. Id.
`Petitioner (Pet. 4) and Patent Owner (Prelim. Resp. 11) each propose
`definitions for various claim terms. On the record before us, the terms identified
`by the parties each relate to structural devices known to, and recognizable by, one
`of ordinary skill in the art. No additional construction of these terms is necessary
`for purposes of this Decision.
`
`
`2 In considering jurisdiction over a corporate parent based on activities of its
`subsidiary, the United States Court of Appeals for the Federal Circuit has held that
`“a corporate subsidiary’s contacts in the forum state cannot be imputed to the
`parent corporation absent clear and convincing evidence that the parent controls
`the subsidiary’s activities.” Avocent Huntsville Corp. v. Aten Intern. Co., 552 F.3d
`1324, 1337–38 (Fed. Cir. 2008) (citing Negron-Torres v. Verizon Commc’ns, Inc.,
`478 F.3d 19, 27 (1st Cir. 2007) (declining to assert jurisdiction over Verizon based
`on the actions of its subsidiary without strong evidence of control by the parent
`corporation)). Here, there is no such strong evidence of control.
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`C. Asserted Grounds of Unpatentability
`Petitioner asserts that all the challenged claims would have been obvious
`under 35 U.S.C. § 103(a) based on the combined disclosures in Schofield ’094 and
`Schofield ’742.
`The Supreme Court has made clear that we apply “an expansive and flexible
`approach” to the question of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 415 (2007). Whether a patent claiming the combination of prior art elements
`would have been obvious is determined by whether the improvement is more than
`the predictable use of prior art elements according to their established functions.
`Id. at 417. To reach this conclusion, however, requires more than a mere showing
`that the prior art includes separate references covering each separate limitation in a
`claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360
`(Fed. Cir. 2011). Rather, obviousness requires the additional showing that a
`person of ordinary skill at the time of the invention would have selected and
`combined those prior art elements in the normal course of research and
`development to yield the claimed invention. Id. As the Supreme Court
`recognized, in many cases a person of ordinary skill “will be able to fit the
`teachings of multiple patents together like pieces of a puzzle,” recognizing that a
`person of ordinary skill “is also a person of ordinary creativity, not an automaton.”
`Id. at 420–21. Against this general background, we consider the references, other
`evidence, and arguments on which Petitioner relies.
`1. Scope and Content of the Prior Art
`a. Schofield ’094 (Ex. 1004)
`Schofield ’094 discloses a vehicle control system, particularly adapted to
`controlling a vehicle’s headlamps in response to sensing the headlights of
`oncoming vehicles and taillights of leading vehicles. Ex. 1004, col. 1, ll. 12–17.
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`Schofield ’094 discloses that vehicle 10 includes vehicle headlight dimming
`control 12 that includes imaging sensor module 14 (see Fig. 2) for sensing light
`from a scene forward of vehicle 10. Id. at col. 3, ll. 36–40. Image sensor module
`14 has optical device 36, such as a lens, and array 38 of photon-accumulating light
`sensors. Id. at col. 4, ll. 16–18. One characteristic used in identifying a light
`source is the spectral characteristics of that source, which are compared with
`spectral signatures of known light sources, such as those of headlights and
`taillights. Id. at col. 1, ll. 62–66.
`Incidental to the disclosure of the vehicle control system described above,
`Schofield ’094 also discloses the structure for mounting the control system within
`the vehicle. As shown generally in Figures 1 and 10, reproduced below,
`Schofield ’094 discloses that imaging sensor module 14 may be fixedly mounted in
`housing 28 by bracket 34 mounted to, or near, windshield 32. Ex. 1004, col. 3,
`ll. 64–66. Bracket 34 also mounts an interior rearview mirror 30. Id. at col. 3,
`l. 67. Schofield ’094 recognizes that “[o]ther mounting techniques for sensor
`module 14 will be apparent to the skilled artisan.” Id. at col. 4, ll. 14–15.
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`Figs. 1 and 10 from Schofield ’094 illustrating an imaging module
` and rear view mirror fixed to a vehicle windshield.
`b. Schofield ’742 (Ex. 1005)
`Schofield ’742 discloses a mounting adaptor adapted to mate with a support
`secured to the inside surface of a window such as a windshield to allow support of
`various types of mirror assemblies, as well as various vehicle accessories adjacent
`to the mirror assembly. Ex. 1005, col. 1, ll. 8–12. The mounting adaptor allows
`substitution or change of the rearview mirror assembly to accommodate different
`types of windshield-mounted supports easily and conveniently. Id. at col. 2, ll. 29–
`33. The adaptor can also provide a support for different vehicle accessories
`adjacent the rearview mirror without interfering with the mounting of the rearview
`mirror assembly, or its replacement, interchangeability or adjustability. Id. at
`col. 2, ll. 33–37. Schofield ’742 also discloses that support of the accessories on
`the adaptor places the accessories in an appropriate position for vehicle operator
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`sighting and use, and allows the addition of desirable options without the need to
`modify existing vehicle components. Id. at col. 2, ll. 37–43.
`As shown generally in Figure 2, reproduced below, Schofield ’742 discloses
`adaptor 10, which slides over conventional windshield support member or
`windshield “button” 20 (also shown at 34 in Figures 9 and 10). Ex. 1005, col. 5,
`ll. 33–37. Windshield support member 20 includes elongated support body 22
`having planar rear surface 24, which faces the front of the vehicle when attached to
`the inside surface of a windshield by a suitable adhesive. Id. at col. 5, ll. 37–42.
`
`
`Fig. 2 of Schofield ’742 is a side elevation of a rearview mirror
`mounting adaptor shown secured to a windshield support
`member and having a conventional rearview mirror assembly
`channel mount secured to it.
`2. Patentability of the Challenged Claims
`The challenged claims fall into two groups: claims 1, 9, 12, 13, and 24–32,
`which are directed to a single accessory support mounting element to which an
`accessory support is mounted (the single mounting element claims); and
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`claims 17–22 and 33–40, which are directed to a mirror mounting element at a first
`location and an accessory support mounting element at a second location (the two
`mounting elements claims).
`a. The Single Mounting Element Claims (Claims 1, 9, 12, 13, and 24–32)
`Petitioner asserts that “Schofield ’094 (Ex. 1004) discloses a rearview mirror
`camera accessory system meeting all of the limitations as claimed in the
`’278 Patent except for specific details of how the accessory system is mounted to
`the vehicle windshield.” Pet. 7; see also id. at 9–10 (Schofield ’094 “does not
`expressly disclose that its accessory structure mounting at the windshield is to an
`adhesive mounting element, or that this structural mounting can be demounted”).
`According to Petitioner, the “windshield mounting details” missing from
`Schofield ’094 “were well-known in the art at the time of the invention, as
`evidenced by Schofield ’742.” Id. at 7. In particular, Petitioner asserts that
`bracket 34 of Schofield ’094 is a mounting element and that it would have been
`obvious to use support member 20 from Schofield ’742 “as, or attached to,
`bracket 34.” Pet. 16 (citing Ex. 1007 ¶ 53).
`All the challenged claims require a mounting element (14) adhesively
`mounted to the windshield and “an accessory support” (such as carrier 12) adapted
`for mounting to and demounting from mounting element 14. See, e.g., Ex. 1002,
`col. 18, ll. 16–17 (claim 1) (“an accessory support adapted for mounting to and
`demounting from said mounting element”). As described in the Specification, the
`“accessory support” is, most broadly, carrier 12 shown in Figure 1. Ex. 1002,
`col. 4, ll. 16–18 (“Carrier portion 12 is a unitarily or integrally molded element that
`receives and/or holds an accessory, such as an imaging sensor 18 (FIG. 10) and a
`lens 20 . . . .”). Carrier portion 12 includes accessory mounting or holding
`portion 24 that protrudes upward from carrier portion 12 (as shown in Figure 6) for
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`mounting the accessory or accessories of the accessory module. Id. at col. 5,
`ll. 11–14. Thus, the accessory support is an element that itself receives and/or
`holds an accessory, such as an imaging sensor and lens, independent of an
`additional element.
`Petitioner asserts that Schofield ’742 discloses the “accessory support”
`element required in the claims. Pet. 17. According to Petitioner, Schofield ’742
`discloses that adaptor 10 mounts to mounting element 20, and asserts that
`adaptor 10 is the “accessory support” recited in claim 1. Id. Petitioner also asserts
`that “projection 18” in Schofield ’742 is the “accessory receiving portion” recited
`in claim 1 because projection 18 receives channel mount 50 from a rear view
`mirror. Id. at 17–18. Petitioner also asserts that adaptor 90 in Schofield ’742,
`shown in the embodiment of Figure 13, is an accessory support, and projection 106
`is an accessory receiving portion. Id. at 18.
`Patent Owner takes a different view. According to Patent Owner, neither
`adaptor 10 nor adaptor 90 in Schofield ’742 qualify as an “accessory support” as
`claimed because “neither is a support or carrier portion having a structure that is
`capable of supporting, receiving or housing an electronic accessory.” Prelim.
`Resp. 38. We agree with Patent Owner with respect to adaptor 10. We disagree
`with Patent Owner with respect to adaptor 90.
`Adaptor 10 in Schofield ’742, shown in Figure 1 reproduced below, is not an
`element that itself receives and/or holds an accessory, such as an imaging sensor
`and lens, independent of an additional element.
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`Fig. 1 of Schofield ’742 illustrating adapter 10.
`Adaptor 90, shown in Figures 13–15 of Schofield ’742, however, is
`significantly different in structure and function. Adaptor 90 includes an accessory
`support structure. Ex. 1005, col. 8, ll. 35–36. As shown in Figure 13 of
`Schofield ’742, reproduced below, parallel, generally planar sidewalls 116, 118 are
`integral with and extend downwardly from side edges 93, 95 of adaptor body 92.
`Sidewalls 116, 118 form the lateral sides of a rectangular receptacle 120. Id. at
`col. 8, ll. 35–42. In use, adaptor 90 mounts on windshield support member 20. Id.
`at col. 8, ll. 45–46.
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`Figure 13 of Schofield ’742 illustrating mounting adaptor 90
`including a receptacle support
`for attachment of a vehicle accessory
`A vehicle accessory, such as headlight dimming sensor 130 (see Fig. 15),
`including housing 132 having light receiving opening 134 and mounting flanges
`136, 138, is received in receptacle 120. Id. at col. 8, ll. 54–57. Dimming sensor
`130 includes light sensing/electrical signaling device 140 connected to slide
`switch 142 controlling the operation of the dimmer and an appropriate electrical
`circuit included on circuit board 144, which is connected to the vehicle electrical
`system. Id. at col. 8, ll. 58–64. When positioned on windshield mounted support
`member 20, which slants rearwardly with the windshield, adaptor 90 supports
`receptacle 120 such that it opens vertically downwardly and holds housing 132 of
`headlight dimming sensor 130 substantially horizontally such that opening 134 is
`aligned toward the front of the vehicle. Id. at col. 8, l. 64–col. 9, l. 5. Headlights
`impinging on the vehicle from the opposite direction are received through
`opening 134 on sensor 140 when switch 142 is on. Id. at col. 9, ll. 3–5.
`Petitioner asserts that modifying Schofield ’094 to include an “adhesively-
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`attached mounting element,” as required by the challenged claims, would have
`been an obvious modification based on Schofield ’742. Pet. 17. As a rationale for
`the proposed combination of reference disclosures, Petitioner asserts that
`adhesively attached windshield brackets disclosed in Schofield ’742 “enable
`universal mounting of aftermarket vehicle accessories.” Id. at 15. This assertion is
`fully supported and disclosed in Schofield ’742, which states that use of the
`mounting adaptor allows substitution or change of the rearview mirror assembly to
`accommodate different types of windshield-mounted supports easily and
`conveniently, and provides a support for different vehicle accessories adjacent the
`rearview mirror. Ex. 1005, col. 2, ll. 29–36.
`In further support of the proposed modification, Petitioner cites
`paragraphs 40–54 of the Declaration of Homayoon Kazerooni, Ph.D., executed
`September 12, 2014.3 Pet. 15. Dr. Kazerooni has a Ph.D. in Mechanical
`Engineering from the Massachusetts Institute of Technology. Ex. 1007 ¶ 1.
`Dr. Kazerooni is a Professor of Mechanical Engineering at the University of
`California at Berkeley. Id. Dr. Kazerooni has over 28 years of mechanical
`engineering experience. Id. ¶ 11. Dr. Kazerooni also serves as Director of the
`Berkeley Robotics and Human Engineering Laboratory. Id. ¶ 16. He has
`published over 170 articles on robotics, human machine systems, haptic systems,
`control sciences, artificial locomotion, prosthetics, and mechatronics. Id.
`Dr. Kazerooni is a named inventor in over forty patents. Id. Dr. Kazerooni’s
`analysis and opinions mirror Petitioner’s arguments.
`Based on the prior art disclosures, and the analysis above, we determine that
`this rationale is sufficient for purposes of this Decision.
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`3 We note that there are no paragraphs 43 or 44 in Dr. Kazerooni’s Declaration.
`There is a large blank space in the Declaration between paragraphs 42 and 45.
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`Patent Owner argues that no embodiments of Schofield ’742 have been cited
`as receiving or supporting accessories as claimed, such as an imaging sensor, much
`less a lens and a CMOS photosensor array. Prelim. Resp. 39. Schofield ’742
`clearly discloses accessories, in conjunction with the embodiment in Figure 13