Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper No. ___
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRW AUTOMOTIVE U.S. LLC
`Petitioner
`v.
`MAGNA ELECTRONICS INCORPORATED
`Patent Owner
`
`Case IPR2014-01497
`Patent 8,531,278
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Douglas Link/
`___________________________
`Douglas W. Link; Reg. No. 68,949
`Lathrop & Gage LLP
`4845 Pearl East Circle, Suite 201
`Boulder, CO 80301
`T: 720.931.3000
`F: 720.931.3001
`patent@lathropgage.com
`dlink@lathropgage.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ................................................................................................. 1
`
`II.
`
`Claims 24-32 should be found invalid, or in the alternative institution
`
`of such claims must be terminated for lack of written support in the
`
`specification. ................................................................................................ 1
`
`III. The cited prior art renders obvious the claimed “accessory support.” .......... 4
`
`A.
`
`Schofield ‘742’s adaptor 90 meets the claimed “accessory
`
`support.” ............................................................................................ 6
`
`B.
`
`Schofield ‘742’s receptacle 120 meets the claimed “accessory
`
`support.” ............................................................................................ 8
`
`C.
`
`Schofield ‘742’s housing 132 meets the claimed “accessory
`
`support.” ............................................................................................ 9
`
`D. As the Board correctly notes, Schofield ‘742 teaches the
`
`claimed “accessory receiving portion.” ............................................ 11
`
`1.
`
`2.
`
`Claim 12 is obvious. ...............................................................11
`
`Claim 13 is obvious. ...............................................................12
`
`IV. The cited prior art renders obvious the claimed “electrical connector.” ...... 14
`
`A.
`
`TRW’s claim construction of “electrical connector” is proper. ........ 14
`
`1. Magna’s proposed construction of “electrical connector” is
`
`unreasonable in light of the ‘278 Patent. .................................14
`
`2. Magna’s construction violates claim differentiation principles.
`
`................................................................................................14
`
`3. Magna reads limitations from the specification into the claims.
`
`................................................................................................16
`
`B.
`
`The cited prior art reads on any reasonable interpretation of
`
`“electrical connector.”...................................................................... 16
`
`i
`
`

`
`1. Magna’s expert’s testimony indicates that one of ordinary skill
`
`would have understood Schofield ‘094 to satisfy Magna’s
`
`narrow interpretation of “electrical connector.” ......................17
`
`2. Magna’s expert establishes that use of an integral connector
`
`was merely a selection of finite choices with predictable results.
`
`................................................................................................18
`
`V.
`
`The cited prior art renders obvious the claimed “mounting element.” ........ 20
`
`VI. Schofield ‘094 is properly combinable with Schofield ‘742. ...................... 21
`
`VII. Dr. Kazerooni’s is qualified as an expert to offer opinions in this case. ..... 22
`
`VIII. TRW Automotive U.S. LLC is the only real party in interest ..................... 25
`
`IX. CONCLUSION ......................................................................................... 25
`
`
`
`ii
`
`

`
`I.
`
`Introduction
`
`Magna’s arguments are wholly inconsistent with the actual teachings of the
`
`references. Magna narrowly focuses on individual element identifiers (such as
`
`“90”) without attempting to view the prior art from the perspective of one of
`
`ordinary skill in the art. The person of skill in the art is not an automaton. KSR
`
`International Co. v. Teleflex Inc. (KSR), 550 U.S. at 421, 82 USPQ2d at 1397.
`
`Magna, however, presents arguments like an automaton without looking at what
`
`the references teach in their entirety.
`
`When the references are fairly read in light of the perspective of ordinary
`
`skill in the art, it is clear that nothing is inventive regarding the instituted claims.
`
`Magna’s arguments are based on factual and legal error and cannot be supported
`
`by the evidence.
`
`II. Claims 24-32 should be found invalid, or in the alternative institution of
`such claims must be terminated for lack of written support in the
`specification.
`
`The Board declined to institute review of claims requiring two mounting
`
`elements. Institution Decision (“ID”) at 22. Nevertheless, review was instituted for
`
`claims requiring two mounting elements (claims 24-32). ID at 23. These claims
`
`were added by amendment and the original specification did not support the two
`
`mounting element limitation. Because the only interpretation of these claims that
`
`harmonizes with the specification also captures the prior art, as argued by TRW,
`
`these claims should be declared invalid. Alternatively, the review of these claims
`
`should be terminated because, given the specification’s lack of support for this
`
`limitation, the term cannot be properly construed.
`
`
`
`1
`
`

`
`The Petition observes that “The ‘278 Patent does not disclose two different
`
`adhesively attached elements” and “the text of the ‘278 Patent itself does not
`
`mention, outside of the claims themselves, any ‘first location’ or ‘second
`
`location.’” Petition at 29. The claims with these limitations were added by
`
`amendment after the application was filed. See 1003-084 through 1003-100. The
`
`specification must describe what is added after an application is filed or the
`
`associated claim is invalid. The claims of the later-filed application must be
`
`supported by the written description in the parent “in sufficient detail that one
`
`skilled in the art can clearly conclude that the inventor invented the claimed
`
`invention as of the filing date sought.” Lockwood v. American Airlines, Inc., 107
`
`F.3d 1565, 1572 (Fed.Cir.1997).
`
`Claims are given their broadest reasonable construction, in light of the
`
`specification. 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).The ‘278 Patent specification describes
`
`the claimed “mirror mounting
`
`button,” which is numbered
`
`236. See 1002-024 at 16:43-
`
`51. As seen in ‘278 Patent
`
`figure 12, reproduced right,
`
`what is disclosed is a single
`
`mounting button with no
`
`
`
`2
`
`

`
`separate mounting element at a location separate from the button.
`
`Magna baldly represents “[t]he ‘278 Patent also discloses a mirror mounting
`
`button at a first location and a mounting element at a second location that is
`
`separate from the first location. The ‘278 Patent makes clear that the mounting
`
`element and mirror mounting button are separate elements.” POR at 6 (emphasis
`
`added). The following passage is what Magna relies upon for its showing of
`
`“clear” support:
`
`The interior rearview mirror assembly may be mounted at the
`
`accessory module, such as via a button-on-button mounting
`
`arrangement or the like, or the accessory module may constitute
`
`a base or mounting portion of the mirror assembly, or the
`
`accessory module and mirror assembly may be otherwise
`
`attached to or connected to or associated with one another,
`
`without affecting the scope of the present invention. 1002-
`
`12:11-18.
`
`Contrary to Magna’s representation, nothing in this passage augments the
`
`disclosure of a single mirror-mounting button to suggest a separate mounting
`
`element. In sum, the only disclosure in the ‘278 Patent specification (the single
`
`mirror mounting button) that can support the limitation at issue is the same mirror
`
`mounting button disclosed in the prior art and relied upon for invalidity in the
`
`Petition. Compare 1002 at 12:11-18 and 17:53-56 with 1005-008 at 1:16-20; see
`
`also POR at 29-30). Therefore, any construction of the limitation made in light of
`
`the specification, as is required, must capture the prior art and instituted claims 24-
`
`32 are invalid, as argued in the Petition.
`
`
`
`3
`
`

`
`Alternatively, TRW hereby requests permission to move to terminate the
`
`proceeding under 37 C.F.R. § 42.72 as was done in IPR2013-00036 because, as in
`
`this matter, the specification did not provide sufficient support to properly construe
`
`the claims. See Blackberry Corp. et al. v. Mobilemedia Ideas, LLC, IPR2013-
`
`00036, Paper 65 at 20-21) (“Without ascertaining the proper claim scope, we
`
`cannot conduct a necessary factual inquiry for determining obviousness—
`
`ascertaining differences between the claimed subject matter and the prior art….
`
`Accordingly, it is appropriate to terminate the proceeding under 37 C.F.R. §
`
`42.72.”).
`
`III. The cited prior art renders obvious the claimed “accessory support.”
`
`The Board correctly determined “Adaptor
`
`90 includes an accessory support structure.” (ID
`
`at 18). The Schofield ‘742 Patent discloses the
`
`claimed
`
`structure, as
`
`shown
`
`in Fig. 13,
`
`reproduced right. (See Petition at 18). Magna’s
`
`argument avoids considering Schofield ‘742 in its
`
`entirety—a basic requirement of Patent law. (See
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721
`
`F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert.
`
`denied,469 U.S. 851 (1984) “A prior art reference
`
`must be considered in its entirety, i.e., as a whole.”). Specifically, Magna’s
`
`argument focuses on “adaptor 90” while ignoring the totality of what is shown in
`
`Fig. 13--an accessory support meeting the claim. Magna admits “receptacle 120
`
`
`
`4
`
`

`
`and housing 132 … receive and/or hold an accessory…” (POR at 27) but
`
`incredibly argues that Schofield ‘742 does not meet the claim limitation.
`
`An internal cavity formed by the union of parts 120/132, which meets the
`
`accessory support as claimed, contains dimming sensor 13, which “includes an
`
`appropriate light sensing/electrical signaling device 140 connected to a 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 electric system via
`
`wiring 146 passing through aperture
`
`128 in top wall 126.” (1005 at 8:58-
`
`64). Fig. 15, right, clearly shows the
`
`circuit board 144 extending upward
`
`from portion 132 into the receptacle
`
`120, and the wiring 146 exits the
`
`connected
`
`internal cavity
`
`through
`
`aperture 126 formed in the receptacle
`
`120. Because receptacle 120 and housing 132 collectively receive and/or hold an
`
`accessory and are coupled to adaptor 90, the claimed “an accessory support
`
`adapted for mounting to and demounting from said mounting element, said
`
`accessory support including an accessory receiving portion configured to receive
`
`an accessory” limitation is met. (1002 at claim 1)(emphasis added).
`
`Contrary to Magna’s argument, adaptor 90 is not just the feature labeled
`
`with the numeral “90.” Rather, the feature is part of a larger structure satisfying the
`
`claim. Specifically, adaptor 90 is part of a single, integral piece of material
`
`
`
`5
`
`

`
`encompassing both adaptor 90 and receptacle 120:
`
`the accessory support structure on adaptor 90 includes a pair of
`
`parallel, generally planar sidewalls 116, 118 which are integral
`
`with and extend downwardly from the side edges 93, 95 of
`
`adaptor body 92 beginning at an area approximately even with
`
`the midpoint of projection 106. Sidewalls 116, 118 form the
`
`lateral sides of a rectangular receptacle 120 which also includes
`
`an angled rear wall 122 which extends downwardly from the
`
`lower end of adaptor body 92 as well as a forward wall 124
`
`which faces the interior of the vehicle when the adaptor is
`
`mounted on the windshield support member 20. (1002-011 at
`
`8:35-46).
`
`Moreover, when considering Schofield ‘742 in its entirety—under the proper
`
`analysis for viewing prior art—Schofield ‘742 teaches a module, as disclosed in
`
`Figures 13 and 15 that clearly meets the claimed “accessory support.” Magna’s
`
`specific arguments are addressed below.
`
`A.
`
`Schofield ‘742’s adaptor 90 meets the claimed “accessory
`
`support.”
`
`Even if adaptor 90 is viewed in isolation, it meets the claimed limitation. It
`
`is undisputed that adaptor 90 mounts and demounts from mounting element 20.
`
`
`
`6
`
`

`
`(See 1005-010 at 5:33-54). 1 Magna admits “housing 132 … relies on … adaptor 90
`
`to connect to the system.” (POR at 29).
`
`Magna argues that adaptor 90 is not an
`
`“accessory support” as claimed because “both
`
`receptacle 120 and housing 132 are additional
`
`elements (in addition to adaptor 90) that receive
`
`and/or hold an accessory, and thus adaptor 90 is
`
`not an element that itself receives and/or holds an
`
`accessory.” (POR at 27). However, adaptor 90
`
`and receptacle 120 are part of
`
`the same
`
`component of Schofield ‘742’s accessory support. As shown in Schofield ‘742,
`
`Fig. 13, right, adaptor 90 and receptacle 120 are made of one piece of material.
`
`(See also 1005-011 at 8:36-42)(“adaptor 90 includes a pair of parallel, generally
`
`planar sidewalls 116, 118 which are integral with and extend downwardly from the
`
`side edges 93, 95 of adaptor body 92 beginning at an area approximately even with
`
`the midpoint of projection 106. Sidewalls 116, 118 form the lateral sides of a
`
`rectangular receptacle 120”).
`
`
`
`1 Adaptor 90 and adaptor 10 attach to mounting element 20 the same way.
`
`“Adaptor 90 includes an adaptor body 92 which is similar in its upper portions to
`
`adaptor 10 but extends downwardly to form a mounting receptacle for a vehicle
`
`accessory.” (1005-011 at 7:67-8:2)
`
`
`
`7
`
`

`
`Schofield
`
`‘742
`
`teaches
`
`receptacle 120 receives an accessory:
`
`“accessory supported in receptacle
`
`120.” (1005-011 at 8:51; see also
`
`1005-012 at 9:27-28)(“Of course,
`
`support 120 may be used or modified
`
`to support other vehicle accessories.”)
`
`Additionally, Magna’s expert testified
`
`“circuitry” is an individual accessory. (1008 at 48:7 – 50:4). Therefore, Schofield
`
`‘742’s receptacle 120 is an accessory support configured to receive an accessory
`
`because “circuit board 144” clearly extends into and is received within receptacle
`
`120 as shown in Schofield ‘742 Fig. 15, right. (see 1005-011 at 8:53-64; 1005 at
`
`Fig. 15).
`
`Thus, because adaptor 90 and 120 are a single unitary piece of material,
`
`adaptor 90 itself is part of receptacle 120 which undisputably receives an
`
`accessory—therefore meeting the claimed “accessory support.”
`
`B.
`
`Schofield ‘742’s receptacle 120 meets the claimed “accessory
`
`support.”
`
`Even if receptacle 120 is viewed in isolation, it meets the claimed limitation.
`
`Receptacle 120 individually meets the claimed accessory support for similar
`
`reasons that adaptor 90 individually meets the claimed accessory support. Again,
`
`as discussed above, it is undisputed that adaptor 90 demounts and mounts from
`
`mounting element 20, and that receptacle 120 receives an accessory. Thus,
`
`
`
`8
`
`

`
`because each of the receptacle 120 and adaptor 90 are part of a single unitary
`
`“accessory support” within Schofield ‘742, receptacle 120 individually meets the
`
`claimed limitation.
`
`C.
`
`Schofield ‘742’s housing 132 meets the claimed “accessory
`
`support.”
`
`Even if housing 132 is viewed in isolation, it meets the claimed limitation. In
`
`essence, Magna argues that because housing 132 and adaptor 90 are not unitary,
`
`Schofield ‘742 can be ignored. Such is contrary to law and reason. The challenged
`
`claims do not require that the accessory support directly “mount[] and demount[]
`
`from said mounting element.” (1002 at claim 1). Rather, the claimed accessory
`
`support is “adapted for mounting to and demounting from said mounting
`
`element.” Id. “Adapted” fairly encompasses mounting and demounting through an
`
`intermediate structure. Moreover, because the claims do not require a direct
`
`engagement, they encompass mounting and/or demounting through an intermediate
`
`structure. See, e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
`
`1997) (“To be joined or connected does not necessitate a direct joining or
`
`connection.”) (emphasis in original); Bradford Co. v. Conteyor North America,
`
`Inc., 603 F.3d 1262, 1270 (Fed. Cir. 2010) (“[w]e hold that the term [‘coupled to’]
`
`should be construed broadly so as to allow an indirect attachment.”).
`
`It is not disputed that the Schofield ‘742 adaptor 90 supports housing 132
`
`which supports light sensing device 140. Magna admits as much: “The light
`
`sensing device 140 [of headlight dimming sensor 130] is disposed at and in the
`
`separate attached housing 132.… headlight dimming sensor 130 is a separate entity
`
`
`
`9
`
`

`
`that merely attaches to receptacle 120 that extends downward from adaptor 90.”
`
`(POR at 28). Because the challenged claims are not limited to a unitary
`
`construction, Schofield ‘742’s teaching to dispose an accessory in a housing
`
`attached to the structure that mounts and demounts from a mirror button meets the
`
`limitation.
`
`Moreover, even if the challenged claims were construed as being limited to a
`
`unitary structure, making the two-piece Schofield ‘742 structure unitary is not a
`
`patentable innovation and Scofield ‘742 renders the limitation obvious. The
`
`Supreme Court held over a century ago that “it involves no invention to cast in one
`
`piece an article which has formerly been cast in two pieces….” Howard v. Detroit
`
`Stove Works, 14 S.Ct. 68, 70, 150 U.S. 164, 170 (U.S. 1893); see In re Prinzler,
`
`(Cust. & Pat.App. 1938) (“It is also true that, ordinarily, there is no invention in
`
`making parts integral instead of riveting or otherwise fastening them together.”);
`
`Application of Wolfe, 251 F.2d 854, 855-56, 45 C.C.P.A. 790, 793 (Cust. & Pat.
`
`App. 1958) (“It would seem scarcely necessary to point out that merely making a
`
`two-piece handle in one piece is not patentable invention because it is an obvious
`
`thing to do if deemed desirable.”); In re Larson, 340 F.2d 965, 968 (CCPA 1965)
`
`(“use of a one piece construction instead of the structure disclosed in [the prior art]
`
`would be merely a matter of obvious engineering choice.”). Thus, while the claims
`
`at issue do not require a unitary accessory support, even if they did, the accessory
`
`support of Schofield ’742 Figs. 13-15 satisfies the claim limitation at issue.
`
`
`
`10
`
`

`
`D. As the Board correctly notes, Schofield ‘742 teaches the claimed
`
`“accessory receiving portion.”
`
`Magna incredibly misrepresents the Schofield ‘742 Patent in arguing that
`
`adaptor 90 does not teach the claimed “accessory receiving portion.” (See POR at
`
`29-32). As discussed in depth above, adaptor 90 and receptacle 120 are a single
`
`piece of material. Therefore, one of ordinary skill in the art cannot look to one
`
`element (i.e. adaptor 90) and ignore the other (i.e. receptacle 120) as Magna
`
`proposes—this is the definition of viewing references as an automaton. (See POR
`
`at 31). Both receptacle 120 and housing 132 receives an accessory. (See 1005-011
`
`at 8:50-51)(“the accessory supported in receptacle 120”); see also Id. at 8:54-56 (a
`
`vehicle accessory such as a headlight dimming sensor 130, including a housing 132
`
`having a light receiving opening 134 and mounting flanges 136, 138, is received in
`
`the opening to receptacle 120”)(emphasis added). Therefore, there can be no
`
`credible argument that the accessory support—including receptacle 120 and
`
`housing 132 which are demountably attached to mounting element 20 via adaptor
`
`90—does not include an accessory receiving portion.
`
`1.
`
`Claim 12 is obvious.
`
`Claim 12 requires that “said accessory receiving portion includes recessed
`
`portion for receiving said imaging sensor.” (1002 at Claim 12). Magna argues that
`
`“no showing or suggestion of any recessed portion, as claimed in the ’278 Patent,
`
`can be found in receptacle 120.” (POR at 42). However, as discussed above,
`
`Schofield ‘742’s entire “accessory support” having elements 90, 120 and 132 and
`
`as shown in Figs. 13-15 meets the claimed accessory support.
`
`
`
`11
`
`

`
`Schofield ‘742 shows a recess or “opening to receptacle 120.” (1005-011 at
`
`8:58; see also Fig. 15). Moreover, housing 132 also includes a recess (e.g. “a light
`
`receiving opening 134.” (Id. at 8:55-56). Thus, both receptacle 120 and housing
`
`132 include individual recesses that meet the claim.
`
`2.
`
`Claim 13 is obvious.
`
`Claim 13 requires that “said accessory receiving portion comprises a
`
`photosensor array receiving portion configured to receive said photosensor array
`
`therein, and wherein said accessory support includes a lens receiving portion
`
`configured to receive said lens …”),” (1002 at Claim 13). Magna baldy asserts that
`
`“[t]hese elements are simply missing from the applied references.” (POR at 44).
`
`However, a fair reading of the references shows otherwise.
`
`Schofield ‘094, in Fig. 2 (right), has a
`
`lens 36 (highlighted yellow) separate from the
`
`circuit board/CMOS photosensor array 38
`
`(highlighted red). (1004-002 at Fig. 2, elements
`
`36, 38). Schofield ‘094 discloses “an image
`
`sensor module 14 [that] includes an optical
`
`device 36, such as a lens, an array 38 of
`
`photon-accumulating light sensors …. [and] a
`
`filter array 40 disposed between optical device
`
`36 and light-sensing array 38.” (1004-014 at 4:16-21; see also 1004-002 at Fig. 2,
`
`1004-004 at Figs. 4-5). Schofield ‘094 taught its accessory “is especially adapted
`
`
`
`12
`
`

`
`for use with, but not limited to, photoarray imaging sensors, such as CMOS …
`
`arrays.” (1004-014 at 3:1-3, emphasis added). Because the lens and CMOS array
`
`are separate from one another, Schofield 094 teaches a photosensor array receiving
`
`portion and a lens receiving portion because the location of Schofield ‘094’s
`
`housing 28 that holds the CMOS array 38 is the claimed photosensor array
`
`receiving portion and the specific location of Schofield ‘094’s housing 28 that
`
`holds the lens 36 is the lens receiving portion.
`
`The Board indicated that Schofield ‘742’s adaptor 90 includes an accessory
`
`support structure. (See ID at 18-20). Nothing unexpected would occur if Schofield
`
`‘742’s adaptor 90 (and receptacle 120) were modified to include the specific
`
`CMOS and lens receiving portions of Schofield ‘094, and then the modified
`
`adaptor 90/receptacle 120 were included in Schofield ‘094’s overall system.
`
`Indeed, Schofield ‘742 expressly states: “[o]f course, support 120 may be used or
`
`modified to support other vehicle accessories.” (1005-012 at 9:27-28). In fact,
`
`Schofield ‘742 teaches to modify the support “shape[]… for and fitted to the
`
`particular accessory being supported.” (Id. at 9:31-34). Thus, Schofield ‘742
`
`expressly motivates to modify the shape of its accessory support to match the
`
`accessory being supported. In other words, if Schofield ‘094’s CMOS and lens
`
`were included in Schofield ‘742’s accessory support and mounted using adaptor 90
`
`(see Petition at 25-26), one of skill in the art would have known to modify the
`
`shape of Schofield ‘742’s receptacle 120 to include the CMOS array and lens
`
`receiving portions illustrated in Schofield ‘094 Fig. 2.
`
`
`
`13
`
`

`
`IV. The cited prior art renders obvious the claimed “electrical connector.”
`
`A. TRW’s claim construction of “electrical connector” is proper.
`
`1. Magna’s proposed construction of “electrical connector” is
`unreasonable in light of the ‘278 Patent.
`
`The Board indicated “[o]n 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.” (Institution Decision, Paper 7, p. 11). Nevertheless,
`
`Magna proposes a construing “electrical connector” to mean “an electro
`
`mechanical assembly for joining electrical circuits together, such as a multi-pin
`
`connector plug or socket.” (POR at 22). This construction is improper. Claim
`
`differentiation within the ‘279 Patent claims requires a broader construction, and
`
`Magna is improperly reading limitations from the specification into the claims.
`
`2. Magna’s construction violates claim differentiation
`principles.
`
`Magna’s proposed construction is overly narrow where the doctrine of claim
`
`differentiation requires a broader construction. Under the “claim differentiation”
`
`doctrine an independent claim should not be interpreted in a way that is
`
`inconsistent with a claim which depends from it. See Wright Medical Technology,
`
`Inc. v. Osteonics Corp., 122 F.3d 1440, 1445 (Fed.Cir. 1997). Also see Laitram
`
`Corp v. NEC Corp., 62 F.3d 1388, 1392 (Fed.Cir. 1995)(“Although each claim is
`
`an independent invention, dependent claims can aid in interpreting the scope of
`
`
`
`14
`
`

`
`claims from which they depend”).
`
`Claim 1 broadly states “ said accessory support comprises an electrical
`
`connector.” Claim 11 (which is not a part of the present IPR, but still relative to
`
`the analysis herein) states, “wherein said electrical connector comprises a plurality
`
`of conducting members insert molded within a connecting portion of said
`
`accessory support.” Therefore, Claim 1, and all other ‘278 Patent claims which do
`
`not expressly narrow the definition, requires the plain and ordinary meaning of the
`
`term “electrical conductor” as indicated by the Board in the Institution Decision.
`
`Magna’s own expert acknowledges that “electrical conductors” include at least
`
`three types of connectors: “[1] pigtail with a connector on them … either in
`
`locking type form or… [2] connectors that don’t lock. You can have [3] connectors
`
`that are molded integrally to the component.” (Nranian Depo (Ex. 1008) at 20:10 –
`
`21:17).
`
`The doctrine of claim differentiation also supports a single conducting
`
`member (i.e. a wire) meeting the claimed “connector.” For example, ‘278 Patent
`
`claim 22 (also not a part of this IPR) states “wherein said electrical connector
`
`comprises a plurality of conducting members.” Therefore, claim 22 narrows the
`
`broad “electrical connector” to including a plurality of conducting members, and
`
`thus the broad use of “electrical connector” must include a single conducting
`
`member.
`
`
`
`15
`
`

`
`3. Magna reads limitations from the specification into the
`
`claims.
`
`Magna is contorting the plain meaning of the claim by proposing its
`
`construction to avoid invalidity and reading unstated limitations into the claim.
`
`Magna proposes that the broadly claimed “electrical connector” is limited to
`
`specific connectors “such as a multi-pin connector plug or socket.” (POR at 22).
`
`However, the claims are not commensurate in scope with these requirements, and
`
`thus the argument fails. See In re Grasselli, 713 F.2d 731, 741 (Fed. Cir. 1983)
`
`(The court held evidence insufficient to rebut the prima facie case where the
`
`proffered evidence was not commensurate in scope with the claims). To the
`
`contrary, the claims only broadly state “electrical connector” and thus are not
`
`limited to only a “multi-pin connector plug or socket” as alleged by Magna.
`
`B.
`
`The cited prior art reads on any reasonable interpretation of
`
`“electrical connector.”
`
`Magna ignores the perspective of ordinary skill in the art when analyzing the
`
`prior art references. The obvious analysis “need not seek out precise teachings
`
`directed to the specific subject matter of the challenged claim, for a court can take
`
`account of the inferences and creative steps that a person of ordinary skill in the art
`
`would employ.” In re Translogic Tech., Inc., 504 F.3d 1249, 1262 (Fed.Cir.2007),
`
`quoting KSR at 418, 127 S.Ct. 1727. “[T]he common sense of those skilled in the
`
`art demonstrates why some combinations would have been obvious where others
`
`
`
`16
`
`

`
`would not.” Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1161
`
`(Fed.Cir.2007).
`
`1. Magna’s expert’s testimony indicates that one of ordinary
`
`skill would have understood Schofield ‘094 to satisfy
`
`Magna’s narrow interpretation of “electrical connector.”
`
`Schofield ‘094 shows imaging control circuit 13 that receives data from
`
`sensor 14 via an input 20 and vehicle lighting control logic module 16, which
`
`exchanges data with control circuit 13 and thereby controls headlamps 18 for the
`
`purpose of modifying the headlight beam. (ID at 22; Petition at 24; 1004-014 at
`
`3:40-44). Input 20 meets the broadly claimed connector limitation.
`
`Input 20 is illustrated throughout Figs. 1-4 of Schofield ‘094. (see Petition at
`
`24; “1004 at Figs. 1-4”). Magna proffers that input 10 is “described only as a
`
`schematic “input” in Schofield ’094. … [and that t]his too fails to teach or suggest
`
`the requirements of an “electrical connector.” (POR at p. 24). However, Magna
`
`assumes a “connector” cannot be a single wire and attempts to create a strawman
`
`by arguing Schofield ‘094 fails to teach unnecessary detail and completely ignores
`
`the interfernces and common knowledge known to those of ordinary skill in the art.
`
`Magna’s own expert indicates use of a connector (even under Magna’s
`
`narrow construction) was well-within the knowledge of those of ordinary skill in
`
`the art. One of ordinary skill in the art would have understood Schofield ‘094’s
`
`input 20 schematic line to teach the use of a connector, as construed by Magna,
`
`
`
`17
`
`

`
`because components are assembled at assembly plants and it was undesirable to
`
`have an assembly plant worker solder a wire in place because “you don't want to
`
`have plant personnel trying to mess around with trying to put electrical wires in the
`
`terminals into individual circuits into pins.” (1008 at 18:21-24). In other words,
`
`“you would never just put bare wires connected together without connector.” (Id.).
`
`Therefore, one of ordinary skill in the art would have understood input 20 of
`
`Schofield ‘094 to meet the claimed connector, as construed by Magna. Indeed,
`
`even if required to be integrally molded into the accessory housing (under Magna’s
`
`overly narrow construction), Nranian admits such integral connectors were well-
`
`known prior to 2000, and thus prior to the critical date of the ‘278 Patent. (1008 at
`
`35:19 – 36:2).
`
`Therefore, when Schofield ‘094 is considered in the context of what one of
`
`ordinary skill would understand, Schofield ‘094 renders obvious an accessory
`
`support comprising a connector, even if the limitation is construed to require a
`
`connector that is integrally molded in the support. Magna’s allegation that
`
`Schofield ‘094 “fails to … suggest the requirements of an electrical connector’”
`
`(POR at 35) simply ignores the perspective of ordinary skill in the art.
`
`2. Magna’s expert establishes that use of an integral connector
`was merely a selection of finite choices with predictable
`
`results.
`
`Magna’s expert establishes that use of a connector, with the teachings of
`
`
`
`18
`
`

`
`Schofield ‘094, was indeed obvious because it was nothing more than a selection
`
`from a finite number of identified, predictable solutions, with a reasonable
`
`expectation of success.
`
`Mr. Nranian testified that the realm of known connectors used by engineers
`
`in the automobile industry included “[1] pigtail with a connector on them … either
`
`in locking type form or… [2] connectors that don’t lock… [and 3] connectors that
`
`are molded integrally to the component.” (1008 at 20:10 – 21:17). Mr. Nranian
`
`established that one of ordinary skill in the art understood the tradeoffs and
`
`considerations of using an integral type connector versus a pigtail type connector.
`
`For example, with pigtail connectors, it was known that “you have these electrical
`
`circuits that are lose, so what you have to do is you have to then put those electrical
`
`circuits and route them with the terminals into a connector.” (1008 at 16:14-20).
`
`On the other hand, one of ordinary skill in the art knew that the integral molding
`
`utilized “special molding techniques, you know, with molds with pins and tooling
`
`so that you can actually manufacture a very complex injection-molded part.” (Id. at
`
`17:5-11). Even under Magna’s proposed construction, the disputed claims are not
`
`limited to any no