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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VALEO NORTH AMERICA, INC., VALEO S.A., VALEO GMBH,
`VALEO SCHALTER UND SENSOREN GMBH,
`AND CONNAUGHT ELECTRONICS LTD.
`Petitioners
`
`v.
`
`MAGNA ELECTRONICS, INC.
`Patent Owner
`
`
`
`
`Case IPR2015-00252
`Patent 8,643,724
`
`
`
`
`PATENT OWNER MAGNA ELECTRONICS, INC.’S PRELIMINARY
`RESPONSE TO PETITION PURSUANT TO 37 C.F.R. § 42.107
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`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`I. 
`
`II. 
`
`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`
`TABLE OF CONTENTS
`
`The Board should not institute inter partes review of the ’724 patent. .......... 1 
`
`Valeo’s obviousness analysis is deficient because Valeo fails to resolve the
`level of ordinary skill in the art. ...................................................................... 4 
`
`A. 
`
`B. 
`
`The Petition does not resolve the level of ordinary skill in the art. ...... 4 
`
`Dr. Wolberg and Dr. Wilhelm confuse, rather than resolve, the level
`of ordinary skill in the art. ..................................................................... 6 
`
`III.  Valeo’s obviousness analysis is deficient because Valeo fails to show that a
`POSA would have combined the references. .................................................. 8 
`
`A.  Dr. Wolberg’s and Dr. Wilhelm’s reliance on each other invalidates
`Valeo’s assertion that a POSA would have been motivated to combine
`the references. ........................................................................................ 9 
`
`1. 
`
`2. 
`
`3. 
`
`Dr. Wolberg merely assumes that a POSA would have
`combined Lemelson with Nissan and Hino. ............................. 10 
`
`Dr. Wilhelm merely assumes that a POSA would have
`combined Nissan and Hino. ...................................................... 11 
`
`The declarants’ piecemeal approach to the references, with
`differing definitions of a POSA, evidences that a POSA would
`not have combined the references. ............................................ 13 
`
`B. 
`
`C. 
`
`Dr. Wolberg and Dr. Wilhelm fail to consider the claims as a whole.14 
`
`Valeo fails to adequately show how a POSA would have combined
`Nissan and Hino. ................................................................................. 16 
`
`D.  Valeo fails to adequately show how a POSA would have combined
`Lelong with Nissan, Hino, and Lemelson. .......................................... 19 
`
`IV.  Valeo’s obviousness analysis is deficient because the Petition fails to
`identify how the construed claim is unpatentable. ........................................ 20 
`
`A. 
`
`B. 
`
`The Petition does not adequately discuss the asserted references. ..... 23 
`
`Valeo’s reasons for combining the references are conclusory. ........... 24 
`
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`i
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`Valeo fails to adequately explain the significance of the evidence cited
`in the claim charts. ............................................................................... 25 
`
`C. 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Claim 1 ...................................................................................... 25 
`
`Claims 2, 15, and 16 ................................................................. 26 
`
`Claim 18 .................................................................................... 27 
`
`Claim 14 .................................................................................... 28 
`
`Claim 23 .................................................................................... 29 
`
`V.  Nissan and Hino are insufficient to disclose “wherein said synthesized image
`approximates a view as would be seen by a virtual camera at a single
`location exterior of the equipped vehicle.” .................................................... 31 
`
`VI.  Conclusion ..................................................................................................... 36 
`
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`ii
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`TABLE OF AUTHORITIES
`
`Cases 
`
`Beckman Instruments v. LKB Produkter AB,
`892 F.2d 1547 (Fed. Cir. 1989)............................................................................ 31
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12 (P.T.A.B. Aug. 29, 2014) ................................... 22, 26
`
`Google Inc. v. Visual Real Estate, Inc.,
`IPR2014-01338, Paper 3 (P.T.A.B. Sept. 2, 2014) .............................................. 21
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................... 5
`
`In re Aslanian,
`590 F.2d 911 (C.C.P.A. 1979) ............................................................................. 31
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006)....................................................................... 15, 24
`
`Int’l Business Machines Corp. v. Intellectual Ventures II LLC,
`IPR2014-00673, Paper 18 (P.T.A.B. Dec. 23, 2014) .......................................... 22
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................ 5, 15, 16, 24
`
`Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC,
`IPR2014-00547, Paper 3 (P.T.A.B. April 10, 2014) ........................................... 21
`
`Ryko Mfg. Co. v. Nu-Star, Inc.,
`950 F.2d 714 (Fed. Cir. 1991)................................................................................ 5
`
`Symbol Techs. Inc. v. Opticon Inc.,
`935 F.2d 1569 (Fed. Cir. 1991)............................................................................ 31
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00136, Paper 31 (P.T.A.B. Nov. 5, 2013) ..................................... 21, 24
`
`Statutes 
`
`35 U.S.C. § 103 .......................................................................................................... 4
`
`
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`iii
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`35 U.S.C. § 103(a) .............................................................................................. 4, 23
`
`35 U.S.C. § 314(a) .................................................................................................1, 4
`
`Rules 
`
`37 C.F.R. § 42.104(b)(4) ..................................................................................... 5, 20
`
`37 C.F.R. § 42.104(b)(5) ............................................................................. 20, 24, 26
`
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 21
`
`37 C.F.R. § 42.24(a)(1)(i) ........................................................................................ 21
`
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 21
`
`Other Authorities 
`
`M.P.E.P. § 2121.01 .................................................................................................. 31
`
`M.P.E.P. § 2125 ....................................................................................................... 31
`
`
`
`iv
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`Patent Owner Magna Electronics, Inc. (“Magna”) respectfully requests that
`
`the Board decline to initiate inter partes review of claims 1-48 of U.S. Patent No.
`
`8,643,724 (“the ’724 patent”) because Petitioners Valeo North America, Inc.,
`
`Valeo S.A., Valeo GmbH, Valeo Schalter und Sensoren GmbH, and Connaught
`
`Electronics Ltd. (collectively “Valeo”) have failed to show a reasonable likelihood
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`of prevailing with respect to any of the challenged claims. 35 U.S.C. § 314(a).
`
`The Notice of Filing Date for the Petition in the instant proceeding issued on
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`December 5, 2014. (Paper 5, p. 1.) This Preliminary Response is timely filed by
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`March 5, 2015, pursuant to 37 C.F.R. § 42.107(b).
`
`I.
`
`The Board should not institute inter partes review of the ’724 patent.
`The Board should not institute inter partes review of the ’724 patent because
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`Valeo’s Petition is replete with deficiencies. Because of these deficiencies, Valeo
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`fails to show a reasonable likelihood of prevailing.
`
`First, the Board should not institute inter partes review because Valeo fails
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`to resolve the level of ordinary skill in the art. Resolving the level of ordinary skill
`
`in the art is one of the fundamental Graham factors that control the obviousness
`
`inquiry. The Petition itself must address the Graham factors. Because the Petition
`
`does not discuss or even mention the appropriate level of ordinary skill in the art,
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`the obviousness analysis set forth in the Petition is deficient. Separately, the
`
`supporting Declarations by Dr. Wolberg and Dr. Wilhelm merely confuse the
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`
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`1
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`appropriate level of ordinary skill in the art because they each provide a different
`
`and unrelated definition of a person of ordinary skill in the art (“POSA”). This
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`failure to resolve the level of ordinary skill in the art renders Valeo’s entire
`
`obviousness analysis deficient.
`
`Second, the Board should deny institution because Valeo fails to show that a
`
`POSA would have combined the asserted references. While Valeo relies on the
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`Declarations of Dr. Wolberg and Dr. Wilhelm for attempting to show that a POSA
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`would have combined the references, neither declarant addresses combining all the
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`asserted references without relying on the testimony from the other and assuming
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`that a POSA would have made the combination. The declarants’ reliance on each
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`other invalidates Valeo’s entire obviousness analysis because Dr. Wolberg and Dr.
`
`Wilhelm provide different definitions of a POSA, and also because it indicates that
`
`a POSA under either definition would not have been motivated to combine all the
`
`references. Furthermore, Valeo fails to show whether or how a POSA would have
`
`modified Nissan in view of Hino. Valeo also fails to show how a POSA would
`
`have modified Nissan, Hino, and Lemelson in view of Lelong. Accordingly, Valeo
`
`fails to establish a reasonable likelihood of prevailing in showing the challenged
`
`claims to be obvious.
`
`Third, Valeo fails to adequately identify how the challenged claims are
`
`unpatentable. The Petition relies heavily on claim charts, which by operation only
`
`
`
`2
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`point to portions of the references that allegedly disclose elements of the claim
`
`without analysis. Outside of the claim charts, where analysis is expected and
`
`necessary, the Petition falls well short of the requirements. Valeo fails to discuss
`
`the asserted references or explain how the cited portions render the challenged
`
`claims obvious. Instead, Valeo makes conclusory statements regarding motivations
`
`for combining the references and what a POSA would have known. The Petition
`
`improperly attempts to incorporate by reference the analyses of Dr. Wolberg and
`
`Dr. Wilhelm in circumvention of the page limit. Without this incorporation by
`
`reference, the Petition is deficient.
`
`Fourth, Nissan does not provide sufficient disclosure for all the claim
`
`features that Valeo asserts Nissan teaches. Valeo relies on FIGS. 3(b) and 3(c) for
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`allegedly disclosing the synthesized image approximating a view from a virtual
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`camera at a single location. There is no disclosure in Nissan to indicate how the
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`views of FIGS. 3(b) and 3(c) would be obtained from the cameras located on the
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`car in Nissan because even the perspective transformation described in Nissan
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`would not be able to produce views of the top of an adjacent car. Thus, a POSA
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`looking at the Nissan figures would not have known how to accomplish this claim
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`feature.
`
`
`
`3
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`These deficiencies affect each of the challenged claims. Accordingly, Valeo
`
`fails to show a reasonable likelihood of prevailing with respect to any of the
`
`challenged claims.
`
`II. Valeo’s obviousness analysis is deficient because Valeo fails to resolve
`the level of ordinary skill in the art.
`A petitioner seeking inter partes review of a patent must satisfy the
`
`threshold showing “that there is a reasonable likelihood that the petitioner would
`
`prevail” for at least one of the challenged claims. 35 U.S.C. § 314(a). Here, Valeo
`
`bases each proposed ground of unpatentability for claims 1-48 of the ’724 patent
`
`on obviousness under pre-AIA 35 U.S.C. § 103(a). (Petition, Paper 1, pp. 9-10.)
`
`Thus, the Petition must establish a reasonable likelihood that at least one of the
`
`challenged claims is obvious. Because the Petition does not resolve the level of
`
`ordinary skill in the art, Valeo’s obviousness analysis is deficient and Valeo fails to
`
`establish a reasonable likelihood of prevailing on obviousness grounds.
`
`A. The Petition does not resolve the level of ordinary skill in the art.
`An invention is unpatentable under pre-AIA 35 U.S.C. § 103(a) “if the
`
`differences between the subject matter sought to be patented and the prior art are
`
`such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art.” 35 U.S.C.
`
`§ 103(a) (2006) (emphasis added). Accordingly, § 103 requires a determination of
`
`factual inquiries, known as the Graham factors, that include resolving the level of
`
`
`
`4
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`ordinary skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). See
`
`also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007) (“While the sequence
`
`of these questions might be reordered in any particular case, the [Graham] factors
`
`continue to define the inquiry that controls.”). Because a finding of obviousness
`
`depends on the perspective of a POSA, resolving the level of ordinary skill in the
`
`art is necessary to maintain objectivity in the obviousness inquiry. Ryko Mfg. Co. v.
`
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`
`Despite the importance of this underlying factual inquiry to a proper
`
`obviousness analysis, the Petition does not resolve or even address the level of
`
`ordinary skill in the art. Although Valeo refers to a person having ordinary skill in
`
`the art (referred to by Valeo as a “PHOSITA”) in the Petition, not once in the
`
`Petition does Valeo expressly identify the level of skill a POSA/PHOSITA would
`
`have in the field of the ’724 patent. (See, e.g., Petition, p. 2.) Moreover, although
`
`Valeo supplies Declarations from Dr. Wolberg and Dr. Wilhelm to accompany the
`
`Petition, the Petition never cites to their respective definitions of the POSA.
`
`This failure to even attempt to resolve the level of ordinary skill in the art
`
`renders the Petition and its entire analysis deficient. Because identifying a POSA is
`
`an integral part of an obviousness challenge under § 103, Valeo fails to set forth in
`
`the Petition “[h]ow the construed claim is unpatentable under [§ 103].” 37 C.F.R.
`
`§ 42.104(b)(4). Accordingly, the Board should deny institution.
`
`
`
`5
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`B. Dr. Wolberg and Dr. Wilhelm confuse, rather than resolve, the
`level of ordinary skill in the art.
`
`The Declarations from Dr. Wolberg and Dr. Wilhelm do not help resolve the
`
`level of ordinary skill in the art. Instead, their Declarations proffer different and
`
`unrelated definitions of a POSA that undermine Valeo’s obviousness analysis and
`
`highlight the deficiencies in the Petition.
`
`Dr. Wolberg, for example, defines a POSA as “someone who was familiar
`
`with basic computer vision systems and the concepts of image stitching and image
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`compositing documented in the vision systems literature prior to May of 1996.”
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`(Wolberg Decl., Ex. 1019 ¶ 25.) He adds that a POSA “may have been an
`
`undergraduate student in mathematics, engineering, or computer science, and
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`should have had at least one course in image processing, computer graphics, or
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`computer vision.” (Id. at 26.) He further explains that a POSA “may have worked
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`in the fields of image processing, computer graphics, or computer vision in
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`academia (either as a professor or a student), for a technology company, or for a
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`government.” (Id. at 27.)
`
`In contrast, Dr. Wilhelm defines a POSA as “a person with at least a
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`bachelor’s degree in electrical engineering, computer science, or physics.”
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`(Wilhelm Decl., Ex. 1020 ¶ 18.) He states that a POSA “would have had at least 2-
`
`5 years of experience with human factors for designs, i.e., how humans interacted
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`with a display in a vehicle.” (Id.) He further adds that a POSA “would also have
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`
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`6
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`had a working understanding of microprocessor driven controls for displays,
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`actuators, and elementary decision making.” (Id. at 19.) Finally, Dr. Wilhelm
`
`proposes that a POSA “would have been comfortable working in a systems
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`environment and would be familiar with control theory with respect to
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`instrumentation displays in automotive vehicles.” (Id.)
`
`The inconsistencies between these two definitions of a POSA amount to two
`
`conflicting POSA definitions, with each definition setting a different level of skill
`
`than the other. For example, Dr. Wolberg’s POSA may not qualify as a POSA
`
`under Dr. Wilhelm’s definition. Similarly, Dr. Wilhelm’s POSA may not qualify as
`
`a POSA under Dr. Wolberg’s definition. The two definitions are so unrelated that it
`
`is unreasonable for Dr. Wolberg’s analysis to rely on or build on Dr. Wilhelm’s
`
`analysis and vice versa.
`
`The Petition itself does not even mention that Dr. Wolberg and Dr. Wilhelm
`
`define the POSA differently. Thus, it is unclear which POSA—or a different one
`
`altogether—Valeo relies on in setting forth its conclusory obviousness analysis.
`
`Moreover, these differing definitions result in more deficiencies in Valeo’s
`
`analysis, as discussed below. (See Section III.A.) Valeo fails to establish a
`
`reasonable likelihood that at least one of the claims challenged in the Petition is
`
`obvious at least because Valeo does not resolve the level of ordinary skill in the art
`
`as it is required to do.
`
`
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`7
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`III. Valeo’s obviousness analysis is deficient because Valeo fails to show that
`a POSA would have combined the references.
`
`Each of the proposed grounds of obviousness in the Petition relies on Nissan
`
`as the primary reference and Hino and Lemelson as secondary references.
`
`(Petition, pp. 9-10.) Valeo, however, only provides conclusory statements
`
`regarding the motivation for a POSA to combine the references. For example,
`
`Valeo asserts that a POSA “would have been motivated to enhance the multi-
`
`camera vision system of Nissan to both improve the images shown to the driver to
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`be a more ideal bird’s eye view, as depicted in FIG. 3 of Hino, and to include the
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`robust driver assist/awareness features that Lemelson describes. See Exs. 1019 at
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`¶¶ 108-113 and 1020 at ¶¶ 82-88.” (Id. at 25.)
`
`This conclusory statement fails to show that a POSA would have combined
`
`the references at least because Dr. Wolberg’s and Dr. Wilhelm’s reliance on each
`
`other invalidates this assertion. To reach their obviousness conclusion, each
`
`declarant assumes that a POSA would have combined some of the references based
`
`on the other declarant’s testimony, demonstrating that a POSA actually would not
`
`have combined all the references. Moreover, the declarants fail to consider the
`
`subject matter of the claims as a whole. In addition, the Petition and the supporting
`
`declarations do not provide sufficient analysis of how a POSA would have
`
`combined the references.
`
`
`
`8
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`A. Dr. Wolberg’s and Dr. Wilhelm’s reliance on each other
`invalidates Valeo’s assertion that a POSA would have been
`motivated to combine the references.
`
`Valeo cites to portions of both the Wolberg Declaration and the Wilhelm
`
`Declaration to support its proposed combination of Nissan, Hino, and Lemelson.
`
`(Id. at 25-26 (citing Wolberg Decl. ¶¶ 108-13; Wilhelm Decl. ¶¶ 82-88).) Dr.
`
`Wolberg and Dr. Wilhelm, however, do not individually consider all the asserted
`
`references combined together.
`
`Instead, Dr. Wolberg and Dr. Wilhelm divide the references and only
`
`address selected references allegedly relevant to their respective fields. (See
`
`Wolberg Decl. ¶ 97 (“My focus in this declaration is on prior art references Nissan,
`
`Hino, Wang, Aishin, Niles, and Lelong as they would have been understood by a
`
`PHOSITA at the time of the earliest priority date for the ’724 patent.”); Wilhelm
`
`Decl. ¶ 79 (“I rely on Dr. Wolberg’s opinions regarding teachings in certain prior
`
`art references and features within the challenged claims that relate to the images
`
`that are obtained from the cameras and issues related to image synthesis.”).
`
`Compare Wolberg Decl. ¶¶ 62-93 (only describing Nissan, Hino, Aishin, Wang,
`
`Niles, and Lelong) with Wilhelm Decl. ¶¶ 43-76 (only describing Lemelson, Fuji,
`
`King, Conner, Schmidt, Paff, Otsuka, Sato, and Goesch).)
`
`Thus, there is no discussion of how a POSA under only one of the two
`
`provided definitions of a POSA would have considered all the references together.
`
`
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`9
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`Dr. Wolberg and Dr. Wilhelm rely on each other to conclude that a POSA would
`
`have combined the references, despite the fact that they each provide different
`
`definitions of a POSA.
`
`1.
`
`Dr. Wolberg merely assumes that a POSA would have
`combined Lemelson with Nissan and Hino.
`
`The cited portion of the Wolberg Declaration does not discuss or mention
`
`Lemelson. (Wolberg Decl. ¶¶ 108-13.) In fact, Dr. Wolberg does not, using his
`
`own expertise, opine on whether a POSA under his own definition would have
`
`combined Lemelson with Nissan and Hino. Instead, Dr. Wolberg merely assumes
`
`that a POSA would have combined Lemelson with Nissan and Hino based on the
`
`testimony of Dr. Wilhelm. (Id. at 97 (“Having reviewed Nissan, Hino, and
`
`Lemelson, based on my experience and my review of Dr. Wilhelm’s declaration, I
`
`assume that the PHOSITA would have been motivated to combine these references
`
`for the reasons discussed in Dr. Wilhelm’s declaration.”).)
`
`There are instances where Dr. Wolberg asserts in his Declaration that a
`
`POSA would have found it obvious to combine Lemelson with the other
`
`references. (See, e.g., id. at 134.) But he always clarifies that he is relying on Dr.
`
`Wilhelm’s testimony. (Id. at 132.)
`
`For example, the section of Dr. Wolberg’s Declaration that Valeo relies on
`
`for the motivation to include Wang in the combination with respect to claim 19
`
`(see Petition, p. 44) expressly limits the discussion to Nissan, Hino, and Wang.
`
`
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`10
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`(Wolberg Decl. ¶ 132 (“This section of my declaration discusses in more detail my
`
`opinions on how [utilizing CMOS imaging arrays] would have been obvious to a
`
`PHOSITA reading Nissan, Hino, and Wang”).) Dr. Wolberg then refers to Dr.
`
`Wilhelm for including Lemelson in the combination. (Id. (“Additional discussion
`
`as to why the PHOSITA would have been motivated to combine these references
`
`with Lemelson can be found in Dr. Wilhelm’s declaration.”).) Even as he
`
`concludes, Dr. Wolberg acknowledges that he is relying on his “knowledge,
`
`education, experience, and expertise, and [his] review of Dr. Wilhelm’s
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`declaration.” (Id. at 136 (emphasis added).)
`
`Because Dr. Wolberg merely assumes that a POSA would have combined
`
`Lemelson with the other references, his ultimate conclusion that the challenged
`
`claims are obvious is inappropriate and his testimony should be discounted.
`
`2.
`
`Dr. Wilhelm merely assumes that a POSA would have
`combined Nissan and Hino.
`
`Similarly, Dr. Wilhelm opines on combining Lemelson with Nissan and
`
`Hino based only on Dr. Wolberg’s opinion that Nissan and Hino would have been
`
`obvious to combine. (Wilhelm Decl. ¶ 80.) Thus, Dr. Wilhelm does not, using his
`
`own expertise, opine on whether a POSA under his own definition would have
`
`made the whole combination. Instead, Dr. Wilhelm merely assumes that a POSA
`
`would have combined Nissan and Hino based on Dr. Wolberg’s testimony.
`
`
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`11
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`Case IPR2015-00252 of
`U.S. Patent No. 8,643,724
`For example, Dr. Wilhelm states that “[f]or purposes of this declaration, I
`
`assume that Nissan and Hino also would have been obvious to combine from the
`
`perspective of a PHOSITA at the time of the earliest priority date for the ’724
`
`patent for the additional reasons more specifically discussed in Dr. Wolberg’s
`
`declaration.” (Id.) Although Dr. Wilhelm uses the phrase “additional reasons” (id.),
`
`he does not give reasons of his own and later merely states that “[t]he combination
`
`of Nissan and Hino would have been obvious to a PHOSITA for the reasons
`
`discussed in Dr. Wolberg’s declaration.” (Id. at 81.)
`
`Dr. Wilhelm makes similar assumptions in other portions of the Wilhelm
`
`Declaration. He “assume[s] that the combinations of Nissan and Hino, and Nissan,
`
`Hino, and Wang as addressed by Dr. Wolberg in his Declaration is [sic] true and
`
`accurate.” (Id. at 139.) He further “assume[s] that the combination of Nissan, Hino,
`
`and Aishin as addressed by Dr. Wolberg in his Declaration is true and accurate.”
`
`(Id. at 140.)
`
`Because Dr. Wilhelm merely assumes that a POSA would have combined
`
`Nissan and Hino, his ultimate conclusion that the challenged claims are obvious is
`
`inappropriate and his testimony should be discounted.
`
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`The declarants’ piecemeal approach to the references, with
`differing definitions of a POSA, evidences that a POSA
`would not have combined the references.
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`Valeo relies on testimonial support from Dr. Wolberg and Dr. Wilhelm for
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`combining Nissan, Hino, and Lemelson, but Dr. Wolberg and Dr. Wilhelm, in turn,
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`rely on each other. Thus, neither Dr. Wolberg nor Dr. Wilhelm opines that a POSA
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`would have made the combination of references applied in the Petition, but instead
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`relies on the assumption that a POSA would have combined some of the
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`references. This piecemeal analysis of the motivations to combine is not sufficient,
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`especially considering the differing views of a POSA by Dr. Wolberg and Dr.
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`Wilhelm. In short, their reliance on each other for certain references is improper
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`because their entire analysis is based on a different level of ordinary skill.
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`That Valeo includes testimonial support from purported experts in different
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`fields indicates that a POSA in the appropriate field of the invention would not
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`have been motivated to combine the references. (Wolberg Decl. ¶ 96 (“To the
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`extent that certain features described in the ’724 patent more specifically relate to
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`reconfigurable display technology, Dr. Ralph Wilhelm’s area of expertise, I defer
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`to and rely on Dr. Wilhelm’s opinions, which I have reviewed, assume to be true
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`and accurate, and adopt for purposes of this declaration.”) (emphasis added).) By
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`needing to rely on Dr. Wilhelm’s expertise, Dr. Wolberg, in effect, admits that a
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`POSA under his definition would not have been motivated to combine Lemelson
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`Case IPR2015-00252 of
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`with the combination of Nissan and Hino. Even he, as the purported expert of a
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`POSA, is not willing to opine on combining Lemelson with Nissan and Hino
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`without relying on Dr. Wilhelm’s opinion. In other words, Dr. Wolberg is either
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`not an expert on a POSA for the field of the ’724 patent or he has shown that a
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`POSA would not have combined the references.
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`Similarly, by needing to rely on Dr. Wolberg’s expertise, Dr. Wilhelm, in
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`effect, admits that a POSA under his definition would not have been motivated to
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`combine Nissan and Hino. Even he, as the purported expert of a POSA, is not
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`willing to opine on combining Nissan and Hino without relying on Dr. Wolberg’s
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`opinion. In other words, Dr. Wilhelm is either not an expert on a POSA for the
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`field of the ’724 patent or he has shown that a POSA would not have combined the
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`references.
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`Accordingly, Valeo’s supporting evidence is not sufficient for showing that
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`a POSA would have combined these references and Valeo fails to establish a
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`reasonable likelihood of success in showing the challenged claims to be
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`unpatentable.
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`B. Dr. Wolberg and Dr. Wilhelm fail to consider the claims as a
`whole.
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`An additional problem with Dr. Wolberg’s and Dr. Wilhelm’s analyses is
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`that they fail to consider the claims as a whole. A proper obviousness analysis
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`requires determining whether “the subject matter as a whole would have been
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`obvious.” 35 U.S.C. § 103(a) (2006). Absent “articulated reasoning with some
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`rational underpinning” on the matter of obviousness, addressing the subject matter
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`of the claims as a whole, Valeo cannot meet its burden of demonstrating
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`obviousness. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
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`Cir. 2006)).
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`Dr. Wolberg’s and Dr. Wilhelm’s testimonies do not provide the necessary
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`support because they do not address the subject matter of the claims as a whole. To
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`the contrary, Dr. Wolberg and Dr. Wilhelm select a particular feature of the claims
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`and then allegedly identify that feature in an asserted reference. After conducting
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`this piecemeal process for each particular claim feature, Dr. Wolberg and Dr.
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`Wilhelm then declare that the entire claim is obvious.
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`For example, Dr. Wolberg opines that the “without duplication of objects”
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`claim feature of claim 1 “is rendered obvious by Nissan alone, which means the
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`claim in its entirety would have been obvious . . . .” (Wolberg Decl. ¶ 106.) Dr.
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`Wilhelm similarly opines that the “reconfigurable display device” claim feature of
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`claim 1 “is rendered obvious by a combination of Nissan, Hino, and Lemelson.
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`Claim 1 in its entirety would therefore have been obvious . . . .” (Wilhelm Decl. ¶
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`87.) Although the declarants conclude by referring to the claim charts in the
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`Petition (see, e.g., Wolberg Decl. ¶ 106; Wilhelm Decl. ¶ 87), this is not enough to
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`show that they considered the subject matter as a whole.
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`Case IPR2015-00252 of
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`The requirement of addressing the subject matter as a whole is important
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`because a claim “is not proved obvious merely by demonstrating that each of its
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`elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Dr.
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`Wolberg’s and Dr. Wilhelm’s piecemeal approach fails to address the subject
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`matter as a whole.
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`C. Valeo fails to adequately show how a POSA would have combined
`Nissan and Hino.
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`Beyond the fundamental deficiency in the Petition regarding whether a
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`POSA would have combined the references generally, Valeo also specifically fails
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`to adequately show how a POSA would have combined Nissan and Hino. Valeo
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`relies on the combination of Nissan and Hino for allegedly disclosing “wherein
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`said synthesized image approximates a view as would be seen by a virtual camera
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`at a single location exterior of the equipped vehicle.” (’724 patent, Ex. 1001,
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`24:44-47.) But Valeo’s explanation for combining Nissan and Hino is insufficient.
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`According to Valeo, a POSA “would have been motivated to enhance the
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`multi-camera vision system of Nissan to . . . improve the images shown to the
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`driver to be a more ideal bird’s eye view, as depicted in Fig. 3 of Hino.” (Petition,
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`p. 25.) In addition, Valeo asserts that “Nissan and Hino are directed to exactly the
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`same solution.” (Id.) Yet, if Nissan and Hino provide exactly the same solution, a
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`POSA would not have combined the references.
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`Thus, in making these assertions, the Petition is conclusory and simply cites
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`to a large portion of the Wolberg Declaration. (Id. at 25, 31-32 (citing Wolberg
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`Decl. ¶¶ 108-14 (almost 4 pages)).) But the Wolberg Declaration is likewise
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`insufficient.
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`For example, Dr. Wolberg states:
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`[A] PHOSITA would have found it obvious to improve
`the picture that is shown to the driver of Nissan to depict
`the ideal aerial view that is shown in Fig. 3 of Hino,
`which is clearly what Nissan is a