Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 27
`Entered: January 15, 2016
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE U.S. LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-004361
`Patent 8,599,001 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, BART A. GERSTENBLITH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 Cases IPR2015-00437, IPR2015-00438, and IPR2015-00439 have been
`consolidated with this proceeding.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 27
`Entered: January 15, 2016
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE U.S. LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-004361
`Patent 8,599,001 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, BART A. GERSTENBLITH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 Cases IPR2015-00437, IPR2015-00438, and IPR2015-00439 have been
`consolidated with this proceeding.
`
`
`
`IPR2015-00436
`Patent 8,599,001 B2
`
`
`A conference call in the above proceeding was held on January 12,
`
`2016, among respective counsel for Petitioner and Patent Owner, and Judges
`
`Arbes, Gerstenblith, and Ippolito.2 Petitioner initiated the conference call to
`
`seek authorization to file a motion to compel Patent Owner to produce
`
`certain materials as routine discovery pursuant to 37 C.F.R. § 42.51(b)(1) or
`
`a motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2).
`
`Petitioner argued during the call that Patent Owner has relevant
`
`information that is inconsistent with positions taken in its Response and
`
`assertions made by Patent Owner’s declarant, Ralph Etienne-Cummings,
`
`Ph.D., during cross-examination. Specifically, Petitioner pointed to Patent
`
`Owner’s arguments regarding the asserted prior art that (1) it would not have
`
`been obvious to combine the teachings of Vellacott and Kenue because there
`
`was no reasonable expectation of success that the proposed modified system
`
`would work, (2) Vellacott fails to teach “pattern recognition,” as recited in
`
`claim 28 of the challenged patent, and (3) Vellacott has not been shown to
`
`be prior art under 35 U.S.C. §§ 102(a) or 102(b). See Paper 19, 25–30,
`
`48–49, 88. Petitioner further argued that Patent Owner has inconsistent
`
`information in its possession because Dr. Etienne-Cummings testified that
`
`documentation regarding the commercial device described in Vellacott
`
`would have been provided to Donnelly Corporation (“Donnelly”), the
`
`original assignee of the challenged patent. Petitioner requested documents
`
`inconsistent with Patent Owner’s statements about the device described in
`
`Vellacott, depositions of the named inventors of the challenged patent, and
`
`an admission from Patent Owner as to Vellacott’s status as a prior art
`
`
`2 A court reporter, retained by Petitioner, was present on the call. Petitioner
`filed a transcript of the call as Exhibit 1012.
`
`
`
`2
`
`
`
`IPR2015-00436
`Patent 8,599,001 B2
`
`reference. Patent Owner opposed Petitioner’s requests, arguing that they are
`
`untimely and overbroad, and that Petitioner had not shown a basis for
`
`producing them as routine discovery or additional discovery.
`
`We directed Petitioner to provide, by email after the call, the specific
`
`list of discovery it would request in a motion, if authorized. Petitioner
`
`provided the following list:
`
`1. The datasheet(s), User Manual(s), and Library Reference(s)
`for the VLSI Vision Limited “Imputer” as described in Exhibit
`1004 (“CMOS In Camera” by Oliver Vellacott) and used by
`Donnelly Corporation
`in development of electro-chromic
`rearview mirrors, which automatically reduce headlamp glare
`from behind, including:
`
`a. “Imputer . . . User Manual”, VLSI Vision Limited,
`
`b. “Imputer . . . IP Library Reference”, VLSI Vision
`Limited,
`
`2. The Datasheet(s), User Manual(s), and Library Reference(s)
`for the VLSI Vision Limited ASIS #1011 device cited in the
`’001 Patent.
`
`Upon further consideration, we are not persuaded that Petitioner has
`
`shown a basis for authorizing a motion to compel routine discovery or for
`
`additional discovery. With respect to routine discovery, Petitioner’s
`
`speculation that the listed materials are in Patent Owner’s possession (via its
`
`purchase of Donnelly), and that they might contain inconsistent information,
`
`is not sufficient under 37 C.F.R. § 42.51(b)(1)(iii). In addition, the
`
`arguments in Patent Owner’s Response pertain to the merits of Petitioner’s
`
`obviousness analysis, i.e., whether Vellacott teaches certain claim
`
`limitations and whether the challenged claims would have been obvious
`
`based on Vellacott and other references. Petitioner has not explained
`
`
`
`3
`
`
`
`IPR2015-00436
`Patent 8,599,001 B2
`
`sufficiently why the additional documents it seeks would be inconsistent
`
`with positions taken by Patent Owner regarding what Vellacott teaches.
`
`For similar reasons, Petitioner has not explained sufficiently how it
`
`could demonstrate that producing the requested materials (if available to
`
`Patent Owner) would be “necessary in the interest of justice” to justify a
`
`motion for additional discovery. See 35 U.S.C. § 316(a)(5); 37 C.F.R.
`
`§ 42.51(b)(2); Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26). At issue in this
`
`proceeding is what Vellacott teaches to a person of ordinary skill in the art
`
`and what would have been obvious to a person of ordinary skill in the art
`
`based on Vellacott and the other cited references. Patent Owner made
`
`various arguments in its Response on those issues, and Petitioner is free to
`
`dispute those arguments in its Reply if it disagrees. Further, as reflected in
`
`the transcript of the conference call, Patent Owner indicated that it was not
`
`challenging whether Vellacott is prior art, contrary to assertions made in
`
`Patent Owner’s Response. See Paper 19, 86–88 (asserting that Petitioner
`
`“failed to prove that Vellacott is prior art”).
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner is not authorized to file any discovery
`
`motion at this time.
`
`
`
`
`
`4
`
`
`
`IPR2015-00436
`Patent 8,599,001 B2
`
`PETITIONER:
`
`Jon Trembath
`Timothy K. Sendek
`A. Justin Poplin
`Allan Sternstein
`Douglas W. Link
`Dan Cleveland Jr.
`Hissan Anis
`LATHROP & GAGE LLP
`JTrembath@lathropgage.com
`TSendek@lathropgage.com
`patent@lathropgage.com
`dlink@lathropgage.com
`DCleveland@lathropgage.com
`HAnis@lathropgage.com
`
`
`
`PATENT OWNER:
`
`David K.S. Cornwell
`Jason D. Eisenberg
`Daniel Yonan
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`davidc-PTAB@skgf.com
`jasone-PTAB@skgf.com
`
`Timothy A. Flory
`Terence J. Linn
`GARDNER, LINN, BURKHART & FLORY, LLP
`Flory@glbf.com
`linn@glbf.com
`
`5
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