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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.
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`MAGNA ELECTRONICS, INC.
`Patent Owner
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`
`
`
`Case IPR2015-00253
`Patent 8,643,724
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`
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`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
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`
`
`
`I.
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`II.
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`Case IPR2015-00253 of
`U.S. Patent No. 8,643,724
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`TABLE OF CONTENTS
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`The Board should not institute inter partes review of the ’724 patent. .......... 1
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`Valeo’s obviousness analysis is deficient because Valeo fails to resolve the
`level of ordinary skill in the art. ...................................................................... 4
`
`A.
`
`B.
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`The Petition does not resolve the level of ordinary skill in the art. ...... 4
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`Dr. Wolberg and Dr. Wilhelm confuse, rather than resolve, the level
`of ordinary skill in the art. ..................................................................... 5
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`III. Valeo’s obviousness analysis is deficient because Valeo fails to show that a
`POSA would have combined the references. .................................................. 7
`
`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.
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`3.
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`Dr. Wolberg merely assumes that a POSA would have
`combined Lemelson with Nissan, Hino, Wang, and Aishin. .... 10
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`Dr. Wilhelm merely assumes that a POSA would have
`combined Nissan, Hino, Wang, and Aishin. ............................. 11
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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. ............................................ 13
`
`B.
`
`C.
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`Dr. Wolberg and Dr. Wilhelm fail to consider the claims as a whole.14
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`Valeo fails to adequately show how a POSA would have combined
`Nissan and Hino. ................................................................................. 16
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`IV. Valeo’s obviousness analysis is deficient because the Petition fails to
`identify how the construed claim is unpatentable. ........................................ 19
`
`A.
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`B.
`
`C.
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`The Petition does not adequately discuss the asserted references. ..... 22
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`Valeo’s reasons for combining the references are conclusory. ........... 23
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`Valeo fails to adequately explain the significance of the evidence cited
`in the claim charts. ............................................................................... 23
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`
`
`i
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`Case IPR2015-00253 of
`U.S. Patent No. 8,643,724
`Claim 49 .................................................................................... 24
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`Claims 54 and 69....................................................................... 25
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`1.
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`2.
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`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.” .................................................... 27
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`VI. Conclusion ..................................................................................................... 32
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`ii
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`TABLE OF AUTHORITIES
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`Cases
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`Beckman Instruments v. LKB Produkter AB,
`892 F.2d 1547 (Fed. Cir. 1989)............................................................................ 27
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12 (P.T.A.B. Aug. 29, 2014) .......................................... 20
`
`Google Inc. v. Visual Real Estate, Inc.,
`IPR2014-01338, Paper 3 (P.T.A.B. Sept. 2, 2014) .............................................. 20
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................... 4
`
`In re Aslanian,
`590 F.2d 911 (C.C.P.A. 1979) ............................................................................. 27
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006)....................................................................... 15, 23
`
`Int’l Business Machines Corp. v. Intellectual Ventures II LLC,
`IPR2014-00673, Paper 18 (P.T.A.B. Dec. 23, 2014) .......................................... 20
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................ 4, 15, 16, 23
`
`Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC,
`IPR2014-00547, Paper 3 (P.T.A.B. April 10, 2014) ........................................... 20
`
`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)............................................................................ 27
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00136, Paper 31 (P.T.A.B. Nov. 5, 2013) ..................................... 20, 23
`
`Statutes
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`35 U.S.C. § 103 .......................................................................................................... 4
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`iii
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`35 U.S.C. § 103(a) .............................................................................................. 4, 15
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`35 U.S.C. § 314(a) .................................................................................................1, 4
`
`Rules
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`37 C.F.R. § 42.104(b)(4) ..................................................................................... 5, 19
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`37 C.F.R. § 42.104(b)(5) ................................................................................... 19, 24
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`37 C.F.R. § 42.107(b). ............................................................................................... 1
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`37 C.F.R. § 42.22(a)(2) ............................................................................................ 19
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`37 C.F.R. § 42.24(a)(1)(i) ........................................................................................ 19
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`37 C.F.R. § 42.6(a)(3) .............................................................................................. 20
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`Other Authorities
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`M.P.E.P. § 2121.01 .................................................................................................. 27
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`M.P.E.P. § 2125 ....................................................................................................... 27
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`
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`iv
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`Case IPR2015-00253 of
`U.S. Patent No. 8,643,724
`Patent Owner Magna Electronics, Inc. (“Magna”) respectfully requests that
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`the Board decline to initiate inter partes review of claims 49-86 of U.S. Patent No.
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`8,643,724 (“the ’724 patent”) because Petitioners Valeo North America, Inc.,
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`Valeo S.A., Valeo GmbH, Valeo Schalter und Sensoren GmbH, and Connaught
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`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).
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`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).
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`I.
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`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.
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`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
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`in the art is one of the fundamental Graham factors that control the obviousness
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`inquiry. The Petition itself must address the Graham factors. Because the Petition
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`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
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`supporting Declarations by Dr. Wolberg and Dr. Wilhelm merely confuse the
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`appropriate level of ordinary skill in the art because they each provide a different
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`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
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`obviousness analysis deficient.
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`Second, the Board should deny institution because Valeo fails to show that a
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`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.
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`Wilhelm provide different definitions of a POSA, and also because it indicates that
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`a POSA under either definition would not have been motivated to combine the
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`references. Furthermore, Valeo fails to show whether or how a POSA would have
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`modified Nissan in view of Hino. Accordingly, Valeo fails to establish a
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`reasonable likelihood of prevailing in showing the challenged claims to be
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`obvious.
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`Third, Valeo fails to adequately identify how the challenged claims are
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`unpatentable. The Petition relies heavily on claim charts, which by operation only
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`point to portions of the references that allegedly disclose elements of the claim
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`without analysis. Outside of the claim charts, where analysis is expected and
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`necessary, the Petition falls well short of the requirements. Valeo fails to discuss
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`the asserted references or explain how the cited portions render the challenged
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`claims obvious. Instead, Valeo makes conclusory statements regarding motivations
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`for combining the references and what a POSA would have known. The Petition
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`improperly attempts to incorporate by reference the analyses of Dr. Wolberg and
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`Dr. Wilhelm in circumvention of the page limit. Without this incorporation by
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`reference, the Petition is deficient.
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`Fourth, Nissan does not provide sufficient disclosure for all the claim
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`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.
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`These deficiencies affect each of the challenged claims. Accordingly, Valeo
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`fails to show a reasonable likelihood of prevailing with respect to any of the
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`challenged claims.
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`3
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`II. Valeo’s obviousness analysis is deficient because Valeo fails to resolve
`the level of ordinary skill in the art.
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`A petitioner seeking inter partes review of a patent must satisfy the
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`threshold showing “that there is a reasonable likelihood that the petitioner would
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`prevail” for at least one of the challenged claims. 35 U.S.C. § 314(a). Here, Valeo
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`bases each proposed ground of unpatentability for claims 49-86 of the ’724 patent
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`on obviousness under pre-AIA 35 U.S.C. § 103(a). (Petition, Paper 1, pp. 8-9.)
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`Thus, the Petition must establish a reasonable likelihood that at least one of the
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`challenged claims is obvious. Because the Petition does not resolve the level of
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`ordinary skill in the art, Valeo’s obviousness analysis is deficient and Valeo fails to
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`establish a reasonable likelihood of prevailing on obviousness grounds.
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`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
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`differences between the subject matter sought to be patented and the prior art are
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`such that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art.” 35 U.S.C.
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`§ 103(a) (2006) (emphasis added). Accordingly, § 103 requires a determination of
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`factual inquiries, known as the Graham factors, that include resolving the level of
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`ordinary skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). See
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`also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007) (“While the sequence
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`of these questions might be reordered in any particular case, the [Graham] factors
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`continue to define the inquiry that controls.”). Because a finding of obviousness
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`depends on the perspective of a POSA, resolving the level of ordinary skill in the
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`art is necessary to maintain objectivity in the obviousness inquiry. Ryko Mfg. Co. v.
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`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
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`Despite the importance of this underlying factual inquiry to a proper
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`obviousness analysis, the Petition does not resolve or even address the level of
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`ordinary skill in the art. Although Valeo refers to a person having ordinary skill in
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`the art (referred to by Valeo as a “PHOSITA”) in the Petition, not once in the
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`Petition does Valeo expressly identify the level of skill a POSA/PHOSITA would
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`have in the field of the ’724 patent. (See, e.g., Petition, p. 2.) Moreover, although
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`Valeo supplies Declarations from Dr. Wolberg and Dr. Wilhelm to accompany the
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`Petition, the Petition never cites to their respective definitions of the POSA.
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`This failure to even attempt to resolve the level of ordinary skill in the art
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`renders the Petition and its entire analysis deficient. Because identifying a POSA is
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`an integral part of an obviousness challenge under § 103, Valeo fails to set forth in
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`the Petition “[h]ow the construed claim is unpatentable under [§ 103].” 37 C.F.R.
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`§ 42.104(b)(4). Accordingly, the Board should deny institution.
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`B. Dr. Wolberg and Dr. Wilhelm confuse, rather than resolve, the
`level of ordinary skill in the art.
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`The Declarations from Dr. Wolberg and Dr. Wilhelm do not help resolve the
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`level of ordinary skill in the art. Instead, their Declarations proffer different and
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`unrelated definitions of a POSA that undermine Valeo’s obviousness analysis and
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`highlight the deficiencies in the Petition.
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`Dr. Wolberg, for example, defines a POSA as “someone who was familiar
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`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
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`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.)
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`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-
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`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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`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
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`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.)
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`The inconsistencies between these two definitions of a POSA amount to two
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`conflicting POSA definitions, with each definition setting a different level of skill
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`than the other. For example, Dr. Wolberg’s POSA may not qualify as a POSA
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`under Dr. Wilhelm’s definition. Similarly, Dr. Wilhelm’s POSA may not qualify as
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`a POSA under Dr. Wolberg’s definition. The two definitions are so unrelated that it
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`is unreasonable for Dr. Wolberg’s analysis to rely on or build on Dr. Wilhelm’s
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`analysis and vice versa.
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`The Petition itself does not even mention that Dr. Wolberg and Dr. Wilhelm
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`define the POSA differently. Thus, it is unclear which POSA—or a different one
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`altogether—Valeo relies on in setting forth its conclusory obviousness analysis.
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`Moreover, these differing definitions result in more deficiencies in Valeo’s
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`analysis, as discussed below. (See Section III.A.) Valeo fails to establish a
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`reasonable likelihood that at least one of the claims challenged in the Petition is
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`obvious at least because Valeo does not resolve the level of ordinary skill in the art
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`as it is required to do.
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`III. Valeo’s obviousness analysis is deficient because Valeo fails to show that
`a POSA would have combined the references.
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`Each of the proposed grounds of obviousness in the Petition relies on Nissan
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`as the primary reference and Hino, Lemelson, Wang, and Aishin as secondary
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`references. (Petition, pp. 8-9.) Valeo, however, only provides conclusory
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`statements regarding the motivation for a POSA to combine the references. For
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`example, with respect to Nissan, Hino, and Lemelson, Valeo asserts that a POSA
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`“would have been motivated to enhance the multi-camera vision system of Nissan
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`to both improve the images shown to the driver to be a more ideal bird’s eye view,
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`as depicted in FIG. 3 of Hino, and to include the robust driver assist/awareness
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`features that Lemelson describes. See Exs. 1019 at ¶¶ 108-113 and 1020 at ¶¶ 139-
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`146.” (Id. at 24.)
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`This conclusory statement fails to show that a POSA would have combined
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`the references at least because Dr. Wolberg’s and Dr. Wilhelm’s reliance on each
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`other invalidates this assertion. To reach their obviousness conclusion, each
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`declarant assumes that a POSA would have combined some of the references based
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`on the other declarant’s testimony, demonstrating that a POSA actually would not
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`have combined all the references. Moreover, the declarants fail to consider the
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`subject matter of the claims as a whole. In addition, the Petition and the supporting
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`declarations do not provide sufficient analysis of how a POSA would have
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`combined the references.
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`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.
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`Valeo cites to portions of both the Wolberg Declaration and the Wilhelm
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`Declaration to support its proposed combination of Nissan, Hino, Lemelson,
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`Wang, and Aishin. (Id. at 24-25 (citing Wolberg Decl. ¶¶ 108-13, 134-35; Wilhelm
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`Decl. ¶¶ 103, 139-46).) Dr. Wolberg and Dr. Wilhelm, however, do not
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`individually consider all the asserted references combined together.
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`Instead, Dr. Wolberg and Dr. Wilhelm divide the references and only
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`address selected references allegedly relevant to their respective fields. (See
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`Wolberg Decl. ¶ 97 (“My focus in this declaration is on prior art references Nissan,
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`Hino, Wang, Aishin, Niles, and Lelong as they would have been understood by a
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`PHOSITA at the time of the earliest priority date for the ’724 patent.”); Wilhelm
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`Decl. ¶ 79 (“I rely on Dr. Wolberg’s opinions regarding teachings in certain prior
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`art references and features within the challenged claims that relate to the images
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`that are obtained from the cameras and issues related to image synthesis.”).
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`Compare Wolberg Decl. ¶¶ 62-93 (only describing Nissan, Hino, Aishin, Wang,
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`Niles, and Lelong) with Wilhelm Decl. ¶¶ 43-76 (only describing Lemelson, Fuji,
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`King, Conner, Schmidt, Paff, Otsuka, Sato, and Goesch).)
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`Thus, there is no discussion of how a POSA under only one of the two
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`provided definitions of a POSA would have considered all the references together.
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`Dr. Wolberg and Dr. Wilhelm rely on each other to conclude that a POSA would
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`have combined the references, despite the fact that they each provide different
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`definitions of a POSA.
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`1.
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`Dr. Wolberg merely assumes that a POSA would have
`combined Lemelson with Nissan, Hino, Wang, and Aishin.
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`Dr. Wolberg does not, using his own expertise, opine on whether a POSA
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`under his own definition would have combined Lemelson with Nissan, Hino,
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`Wang, and Aishin. Instead, Dr. Wolberg merely assumes that a POSA would have
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`combined Lemelson with Nissan, Hino, Wang, and Aishin based on the testimony
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`of Dr. Wilhelm. (Wolberg Decl. ¶ 97 (“Having reviewed Nissan, Hino, and
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`Lemelson, based on my experience and my review of Dr. Wilhelm’s declaration, I
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`assume that the PHOSITA would have been motivated to combine these references
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`for the reasons discussed in Dr. Wilhelm’s declaration.”).)
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`There are instances where Dr. Wolberg asserts in his Declaration that a
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`POSA would have found it obvious to combine Lemelson with the other
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`references. (See, e.g., id. at 134.) But he always clarifies that he is relying on Dr.
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`Wilhelm’s testimony. (Id. at 132.)
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`For example, the section of Dr. Wolberg’s Declaration that Valeo relies on
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`for the motivation to include Wang in the combination (see Petition, p. 25)
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`expressly limits the discussion to Nissan, Hino, and Wang. (Wolberg Decl. ¶ 132
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`(“This section of my declaration discusses in more detail my opinions on how
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`[utilizing CMOS imaging arrays] would have been obvious to a PHOSITA reading
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`Nissan, Hino, and Wang.”).) Dr. Wolberg then refers to Dr. Wilhelm for including
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`Lemelson in the combination. (Id. (“Additional discussion as to why the PHOSITA
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`would have been motivated to combine these references with Lemelson can be
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`found in Dr. Wilhelm’s declaration.”).) Even as he concludes, Dr. Wolberg
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`acknowledges that he is relying on his “knowledge, education, experience, and
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`expertise, and [his] review of Dr. Wilhelm’s declaration.” (Id. at 136 (emphasis
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`added).)
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`Because Dr. Wolberg merely assumes that a POSA would have combined
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`Lemelson with the other references, his ultimate conclusion that the challenged
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`claims are obvious is inappropriate and his testimony should be discounted.
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`2.
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`Dr. Wilhelm merely assumes that a POSA would have
`combined Nissan, Hino, Wang, and Aishin.
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`Similarly, Dr. Wilhelm opines on combining Lemelson with the other
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`references based only on Dr. Wolberg’s opinion that Nissan, Hino, Wang, and
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`Aishin would have been obvious to combine. (Wilhelm Decl. ¶¶ 139-40.) Thus, Dr.
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`Wilhelm does not, using his own expertise, opine on whether a POSA under his
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`own definition would have made the whole combination. Instead, Dr. Wilhelm
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`merely assumes that a POSA would have combined Nissan, Hino, Wang, and
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`Aishin based on Dr. Wolberg’s testimony.
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`For example, Dr. Wilhelm states that “[f]or purposes of this declaration, I
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`assume that Nissan and Hino also would have been obvious to combine from the
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`perspective of a PHOSITA at the time of the earliest priority date for the ’724
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`patent for the additional reasons more specifically discussed in Dr. Wolberg’s
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`declaration.” (Id. at 80.) Although Dr. Wilhelm uses the phrase “additional
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`reasons” (id.), he does not give reasons of his own and later merely states that
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`“[t]he combination of Nissan and Hino would have been obvious to a PHOSITA
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`for the reasons discussed in Dr. Wolberg’s declaration.” (Id. at 81.)
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`In the portion of the Wilhelm Declaration that Valeo cites in the Petition, Dr.
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`Wilhelm makes similar assumptions. (Id. at 139-40.) He “assume[s] that the
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`combinations of Nissan and Hino, and Nissan, Hino, and Wang as addressed by
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`Dr. Wolberg in his Declaration is [sic] true and accurate.” (Id. at 139.) He further
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`“assume[s] that the combination of Nissan, Hino, and Aishin as addressed by Dr.
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`Wolberg in his Declaration is true and accurate.” (Id. at 140.)
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`Because Dr. Wilhelm merely assumes that a POSA would have combined
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`Nissan, Hino, Wang, and Aishin, his ultimate conclusion that the challenged claims
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`are obvious is inappropriate and his testimony should be discounted.
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`3.
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`Case IPR2015-00253 of
`U.S. Patent No. 8,643,724
`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, Lemelson, Wang, and Aishin, but Dr. Wolberg and Dr.
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`Wilhelm, in turn, rely on each other. Thus, neither Dr. Wolberg nor Dr. Wilhelm
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`opines that a POSA would have made the combination of references applied in the
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`Petition, but instead relies on the assumption that a POSA would have combined
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`some of the references. This piecemeal analysis of the motivations to combine is
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`not sufficient, especially considering the differing views of a POSA by Dr.
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`Wolberg and Dr. Wilhelm. In short, their reliance on each other for certain
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`references is improper because their entire analysis is based on a different level of
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`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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`with the combination of Nissan, Hino, Wang, and Aishin. Even he, as the
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`purported expert of a POSA, is not willing to opine on combining Lemelson with
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`Nissan, Hino, Wang, and Aishin without relying on Dr. Wilhelm’s opinion. In
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`other words, Dr. Wolberg is either not an expert on a POSA for the field of the
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`’724 patent or he has shown that a 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; Nissan, Hino, and Wang; or Nissan, Hino, and Aishin.
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`Even he, as the purported expert of a POSA, is not willing to opine on combining
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`Nissan, Hino, Wang, and Aishin without relying on Dr. Wolberg’s opinion. In
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`other words, Dr. Wilhelm is either not an expert on a POSA for the field of the
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`’724 patent or he has shown that a POSA would not have combined the 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 claims 49, 65, and 78 “is rendered obvious by Nissan alone, which
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`means the claim[s] in [their] entirety would have been obvious . . . .” (Wolberg
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`Decl. ¶ 106.) Dr. Wilhelm similarly opines that the “reconfigurable display device”
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`claim feature of claims 49, 65, and 78 “is rendered obvious by a combination of
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`Nissan, Hino, and Lemelson. Claim[s 49, 65, and 78] in [their] entirety would
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`therefore have been obvious . . . .” (Wilhelm Decl. ¶ 87.) Although the declarants
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`conclude by referring to the claim charts in the Petition (see, e.g., Wolberg Decl. ¶
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`106; Wilhelm Decl. ¶ 87), this is not enough to show that they considered the
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`subject matter as a whole.
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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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`28:46-49, 31:64-67, 35:8-11.) But Valeo’s explanation for combining Nissan and
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`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. 24.) In addition, Valeo asserts that the POSA would have combined Nissan and
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`Hino because “both references perform a coordinate transformation to provide the
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`driver with the same plan view” and Hino provides “an ideal view from the
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`perspective of a virtual camera directly above the vehicle.” (Id. at 32.) In making
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`these assertions, the Petition is conclusory and simply cites to a large portion of the
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`Wolberg Declaration. (Id. at 24, 31 (citing Wolberg Decl. ¶¶ 108-14 (almost 4
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`pages)).) But the Wolberg Declaration is likewise 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 attempting to show the
`driver, based on the calculations performed in Hino (via
`incorporation of
`the JP Handbook, Ex. 1024)
`to
`transform the images from the multiple cameras