Trials@uspto.gov
`571-272-7822
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`Paper No. ___
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`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
`____________
`
`Cases IPR2015-00436, IPR2015-00437,
`IPR2015-00438, IPR2015-00439
`
`Patent 8,599,001 B2
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`
`
`
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`
`
`

`
`TABLE OF CONTENTS
`
`
`
`
`I.
`
`II.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`Page
`
`Introduction .................................................................................................. 1
`
`It was obvious to combine Vellacott with Kenue to provide a
`forward facing camera. ................................................................................. 2
`
`A. Collateral estoppel does not preclude TRW from combining
`Vellacott and Kenue. .......................................................................... 2
`
`
`
`B. Only an automaton with no common sense could find that
`Vellacott and Kenue are not combinable. ............................................ 5
`
` 1. Reversing Vellacott’s camera to face forward would not have
` rendered the system unsuited for its intended purpose…….…….5
`
` 2. There was reasonable expectation of success in combining
` Vellacott with Kenue…………………………………………….10
`
` 3. Only an automaton would not be enabled to make the
` invention of the ‘001 Patent based upon Vellacott
` and Kenue…................................................................................14
`
`III. The relevant references disclose all aspects of the claimed invention. ......... 15
`
`A.
`
`Both Vellacott and Kenue disclose a module attached
`to a windshield. ................................................................................. 16
`
`B. Vellacott combined with Kenue discloses an array with
`more columns than rows. .................................................................. 16
`
`C.
`
`The combination of Vellacott and Kenue teaches pattern
`recognition. ....................................................................................... 19
`
`D. Vellacott and Kenue teach a control that determines a peak
`light level in at least one subarray. .................................................. 19
`
`E.
`
`Vellacott and Kenue teach an electrical connector to a
`power source of the vehicle. .............................................................. 20
`
`i
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`

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`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
`
`
`
`F.
`
`G.
`
`Vellacott and Kenue teach the use of an image processor that
`compares captured image data with stored image data and
`outputs a vehicle control signal based on the comparison. ................ 21
`
`The combined references including Schofield teach a module
`that releasably mounts to a mounting element adhesively
`attached at the vehicle windshield. .................................................. 22
`
`H. Venturello is properly combinable with Vellacott, rendering
`obvious a vehicle vision system that “determines
`presence … of fog” or “recognize[z] veiling glare.” ......................... 23
`
`
`
`1. Magna mischaracterizes the combination proposed by TRW…..23
`
`
`
`2. Magna mischaracterizes the totality of the references and
` related hardware…………………………………………………25
`
`3. Vellacott’s system is capable of running the fog detection
` algorithms of Venturello……………………………………..….24
`
`
`
`
`
`
`III. TRW is not time-barred under 35 U.S.C. §315(a). ...................................... 28
`
`
`IV. TRW Holdings and ZF Friedrichshafen AG are not real
`parties in interest. ........................................................................................ 30
`
`V.
`
`Conclusion .................................................................................................. 37
`
`ii
`
`

`
`
`
`Ex. No.
`
`Ex. List
`(Ex. 1001)
`‘001 Patent
`(Ex. 1002)
`‘001 FH
`(Ex. 1003)
`Vellacott
`(Ex. 1004)
`Kenue
`(Ex. 1005)
`Yanagawa
`(Ex. 1006)
`
`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
`
`
`
`Exhibit List
`
`
`Description
`
`Exhibit List
`
`U.S. Patent No. 8,599,001 for Vehicular Vision System, issued to
`Schofield et al. on December 3, 2013.
`Prosecution History File Wrapper of U.S. Patent No. 8.599,001
`
`Vellacott, Oliver, “CMOS in Camera,” IEE Review, pp. 111-114
`(May 1994)
`U.S. Pat. No. 4,970,653 issued to Kenue on Nov. 13, 1990
`
`Japanese Kokai Application for Travelling Vehicle Recognition
`Device, by Yanagawa et al., No. S62-131837, published June 15,
`1987, together with certified translation.
`European Pat. Appl. No. 0 353 200 published Jan. 31, 1990 to
`Venturello
`U.S. Pat. No. 4,930,742 issued to Schofield on June 5, 1990
`
`PCT Pub. No. WO 93/11631, published June 10, 1993
`
`U.S. Pat. No. 5,166,681 issued to Bottesch on Nov. 24, 1992
`
`Expert Declaration of Jeffrey A. Miller
`
`Venturello
`(Ex. 1107)
`Schofield
`(Ex. 1108)
`Denyer
`(Ex. 1009)
`Bottesch
`(Ex. 1010)
`Miller Dec.
`(Ex. 1011)
`(Ex 1012) Original Transcript of Board Telephone Conference Hearing
`(January 12, 2016)
`(Ex 1013) G. Moore, “Cramming more components onto integrated circuits,”
`Electronics, Vol. 38, No. 8, April 19, 1965
`(Ex 1014) Curriculum Vitae of Lester J. Kozlowski
`(Ex 1015)
`L. Kozlowski et al., “2.5µm PACE-I HgCdTe 1024x1024 FPA,”
`Proc. IRIS Detector Specialty, August 1994
`(Ex 1016) Business Wire, “Rockwell Scientific and UMC Develop Ultra Large
`Readout IC for Infrared Astronomy,” Aug. 22, 2002
`
`iii
`
`

`
`(Ex 1019)
`
`(Ex 1026)
`
`(Ex 1029)
`
`
`(Ex 1017)
`
`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
`
`(Ex 1018)
`
`J. Beletic, “Exotic Imaging: IR focal plane arrays enable imaging
`that is out of this world,” Laser Focus World, October 2007
`P. Noble, “Self-Scanned Silicon Image Detector Arrays,” IEEE
`Trans. ED, Vol. ED-15, No. 4, April 1968
`P. Fry and P. Noble, “Fixed Pattern Noise in Photomatrices,” IEEE
`JSSC, Vol. SC-5, No.5, Oct. 1970
`(Ex 1020) V. Graefe, “Vision for Intelligence Road Vehicles”
`(Ex 1021)
`J.D. Plummer and J.D. Meindl, “A Low Light Level Self-Scanned
`MOS Image Sensor,” ISSCC72, Feb. 1972
`(Ex 1022) G.J. Michon and H.K. Burke, “Charge Injection Imaging,” ISSCC
`73, Feb. 15, 1973
`(Ex 1023) G.J. Michon and H.K. Burke, “Operational Characteristics of CID
`Imager,” ISSCC 74, Feb. 13, 1974
`(Ex 1024) C. Anagnostopoulos, “Signal Readout in CID Image Sensors,” IEEE
`JSSC, Vol. SC-13, No. 1, Feb. 1978
`(Ex 1025) R. Ballingall et al., “Two-Dimensional Random Access Infrared
`Arrays,” IEE Advanced Infrared Detectors and Systems, No. 228,
`London, 1983
`I. M. Baker et al., “Photovoltaic CdHgTe – silicon hybrid focal
`plane,” Infrared Technology X, Proceedings of SPIE v. 510, 1984
`(Ex 1027) Renshaw et al., “ASIC Image Sensors,” IEEE International
`Symposium on Circuits and Systems, 1-3 May 1990, pp. 3038-3041
`Vol. 4 (1990)
`(Ex 1028) K. Chen, M. Afghani, P.E. Danielson, and C. Svensson, “PASIC: A
`processor-A/D converter-sensor integrated circuit,” ISCAS90, pp.
`1705-1708, 1-3 May 1990
`T. Ozaki, et al., “A Low-Noise Line-Amplified MOS Imaging
`Devices”, IEEE Transactions on Electron Devices, Vol. 38, No. 5
`(May 1991)
`(Ex 1030) U.S. Patent No. 3,949,162 issued to Malueg on April 6, 1976
`(Ex 1031) U.S. Patent No. 4,000,418, issued to Waldron on Dec. 28, 1976
`(Ex 1032) U.S. Patent No. 4,011,442 issued to Engeler on March 8, 1977
`(Ex 1033) U.S. Patent No. 4,079,422, issued to Anagnostopoulos on March 14,
`1978
`(Ex 1034) U.S. Pat. No. 4,434,441, issued to Ishizaki on Feb. 28, 1984
`(Ex 1035) U.S. Patent No 8,637,801 issued to Schofield et al. on January 28,
`2014
`
`iv
`
`

`
`
`(Ex 1036) WO 94/19212 issued to Schofield published on September 1, 1994
`(“SCHOFIELD ‘212”)
`(Ex 1037) U.S. Patent No. 4,902,886 issued to Smisko on February 20, 1990
`(Ex 1038) U.S. Patent No. 5,043,820 issued to Wyles on August 27, 1991
`(Ex 1039)
`Transcript of deposition of Ralph Etienne-Cummings on December
`11, 2015
`(Ex 1040) U.S. Pat. No. 4,529,886, issued to Yokoyama on July 16, 1985
`(Ex 1041) K. Chen, A. Astrom, and P.E. Danielsson, “PASIC: A Smart Sensor
`for Computer Vision,” Pattern Recognition, 1990. Proceedings., 10th
`International Conference on, pp. 286-291, 16-21 June 1990
`(Ex 1042) R.F. Lyon, “The optical mouse, and an architectural methodology for
`smart digital sensors,” Proc. CMU Conference on VLSI Structures
`and Computations, Computer Science Proc., 50, October 1981
`(Ex 1043) R. Forchheimer, K. Chen, C. Svenyssor and A. Asytrom, “Single-
`Chip Image Sensors with a Digital Processor Array,” Journal of
`VLSI signal processing systems for signal, image and video
`technology, April 1993
`(Ex 1044) D.B. Renshaw, P.B. Denyer, G. WANG, and M.Y. Liu, “ASIC
`Vision,” Custom Integrated Circuits Conference (CICC),1990
`P. Fletcher, “CMOS light-sensor process makes possible low-cost
`smart machine-vision systems,” Electronic Design, June 10, 1993
`(Ex 1046) U.S. Patent No.4,681,440 issued to Burke et al. on July 21, 1987
`(Ex 1047) A. F. Murray and P. B. Denyer, “A CMOS Design Strategy for Bit-
`Serial Signal Processing,” IEEE JSSC, Vol. 20 Issue 3, pp. 746-753
`(1985)
`(Ex 1048) WANG et al., “CMOS video camera,” Euro ASIC ’91, pp. 100-103
`(1991)
`S. Anderson, W. H. Bruce, P. B. Denyer, D. Renshaw & G. Wang,
`“A Single Chip Sensor and Image Processor for Fingerprint
`Verification,” Univ. of Edinburgh, IEEE 1991 Custom Integrated
`Circuits Conference
`Lu et al., “On-Chip Automatic Exposure Control Technique,”
`Proceedings – Seventeenth European Solid-State Circuits Conference
`1991, pp. 281-284 (1991)
`P.B. Denyer, D. Renshaw, W. Guoyu and L. Mingying, “CMOS
`image sensors for multimedia applications,” Proceedings of the IEEE
`1993 CICC, pp. 11.5.1-11.5.4 (1993)
`(Ex 1052) U.S. Patent No. 5,892,540, issued to Kozlowski on April 6, 1999
`
`(Ex 1049)
`
`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
`
`v
`
`(Ex 1045)
`
`
`
`(Ex 1050)
`
`(Ex 1051)
`
`

`
`
`(Ex 1053)
`
`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
`
`(Ex 1064)
`
`(Ex 1065)
`
`(Ex 1067)
`
`Peter B. Denyer, D. Renshaw, W. Gouyu, L.M.Ying, and S.
`Anderson, “On-Chip CMOS sensors for VLSI Imaging Systems,”
`IFIP Transactions VLSI 91 Halaas & Denyer eds. pp. 157-166
`(1992) by Peter Denyer et al.
`(Ex 1054) Article entitled “Smart Camera” in the Microscopy and Analysis
`publication, p. 59, dated July 1993
`(Ex 1055) Article entitled “Imaging Computer” in the Quality Today
`publication, p. 32, dated July 1993
`(Ex 1056) U.S. Pat. No. 4,839,729, issued to Ando on June 13, 1989
`(Ex 1057)
`J. Paradiso, “Application of Miniature Cameras in Video
`Straightness Monitor Systems,” GEM-TN-94-608 (1994)
`(Ex 1058) U.S. Patent No. 5,345,266 issued to Denyer on September 6, 1994
`(Ex 1059) U.S. Patent No. 5,773,810 issued to Hussey et al. on June 30, 1998
`(Ex 1060) U.S. Patent No. 5,784,102 issued to Hussey et al. on July 21, 1998
`(Ex 1061) U.S. Patent No. 7,304,670 issued to Hussey et al. on December 4,
`2007
`(Ex 1062) U.S. Patent No. 7,383,998 issued to Parker et al. on June 10, 2008
`(Ex 1063) U.S. Patent No. 5,748,326 issued to Thompson-Bell et al. on May 5,
`1998
`J. dela Torre, Jr., “Earth Reference Imager Experiment for Satellite
`Attitude Determination,” Arizona State University (1995)
`S. Hasan, “A CCD based Image Perception Sensor for Mobile
`Robots,” EEL 5934, Intelligent Machine Design Laboratory,
`University of Florida (1995)
`(Ex 1066) Case No. 1:12-cv-00654, Dkt. No. 129
`
`S. Tsugawa, “Vision-Based Vehicles in Japan: Machine Vision
`Systems and Driving Control Systems, IEEE Transactions on
`Industrial Electronics, Vol. 41, No. 4 (August 1994)
`IEE Review May 25, 1994, publication cover page showing the
`Vellacott Article, from University of Essex Library
`(Ex 1069) R. Wilson, “Technology: A little camera with big ideas – The latest
`smart vision system,” Financial Times, 17 Jun 1993.
`“Enhanced Night Visibility Series: Phases II and III –
`Characterization of Experimental Vision Enhancement Systems,”
`Publication No. FHWA-HRT-04-148, Vol. XVII, (December 2005)
`(Ex. 1071) Rebuttal Declaration of Lester J. Kozlowski dated Jan. 19, 2016
`
`
`(Ex 1068)
`
`(Ex 1070)
`
`vi
`
`

`
`I.
`
`Introduction
`
`Magna has failed to overcome TRW’s prima facie case of obviousness as
`
`reflected in the Institution Decision (Paper No. 10; “ID”) 1. One thing is clear from
`
`Magna’s response, however: the combination of Vellacott and Kenue is
`
`devastating to the claims of the ‘001 Patent, a point that Magna itself implicitly
`
`makes by arguing desperately that the two references are not combinable.
`
`Unfortunately, Magna’s effort in this regard reflects a fundamentally flawed view
`
`of the framework for assessing obviousness. Specifically, Magna’s position
`
`depends largely on artificially restricting the disclosures of Vellacott and Kenue
`
`and reducing the person of ordinary skill to an automaton with no common sense
`
`or creativity whatsoever. Magna carries this improper framework over to its
`
`discussion of the specific disclosures of the remaining prior art, as well, rendering
`
`those arguments similarly flawed.
`
`Magna is left to assert a number of procedural arguments (e.g., collateral
`
`estoppel, time bar pursuant to Section 315(a), and failure to name real parties in
`
`interest), all of which fly in the face of numerous Board decisions, including prior
`
`decisions addressing identical issues in proceedings between TRW and Magna.
`
`Thus, the facts and reasoning in TRW’s Petition and the ID stand, and the
`
`Board should find all of the claims at issue unpatentable.
`
`
`
`1 This is a consolidated proceeding. Citations are to documents found in
`
`IPR2015-00436 unless otherwise noted.
`1
`
`

`
`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
`
`
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`II.
`
`It was obvious to combine Vellacott with Kenue to provide a forward
`
`facing camera.
`
`As explained in detail below, Magna’s repeated and varied attempts to argue
`
`that Vellacott and Kenue are not combinable fail at every turn.
`
`A. Collateral estoppel does not preclude TRW from combining
`
`Vellacott and Kenue.
`
`Magna cannot rely upon collateral estoppel, for multiple reasons. First,
`
`Magna gives up its entire position when it concedes that it “understands the Board
`
`is not mandated to follow decisions in other cases and from other panels….”
`
`(Patent Owner Response, Paper No. 19 (“POR”), at 9 (emphasis added)).2 This
`
`concession alone provides the Board all it needs to refuse to entertain Magna’s
`
`collateral estoppel argument.
`
`And there is no basis to follow any other Board decision here, in any event,
`
`because no issue in this case is “identical” to any issue previously decided by the
`
`Board. In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); Kearns v. Gen.
`
`Motors Corp., 94 F.3d 1553, 1556 (Fed. Cir. 1996) (“Issue preclusion, of narrower
`
`scope than res judicata, requires that the identical issue was decided on the merits
`
`between the same parties.”). The relevant issue at hand—whether Vellacott as a
`
`primary reference can properly be modified in view of Kenue to render the ’001
`
`
`
`2 Magna’s understanding that the Board is not mandated to follow institution
`
`decisions from other cases is correct. See Stellar Energy Americas Inc. v. TAS
`
`Energy, Inc., Case IPR2015-01212, Paper 13, p. 10; SAP America Inc. v. Clouding
`
`IP, LLC., Case IPR2014-00299, Paper 13, p. 3.
`
`2
`
`

`
`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
`
`
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`Patent claims obvious—was not a part of the ’293 IPR. Indeed, as the Board has
`
`already recognized in this case, TRW did not even assert Kenue in the ’293 IPR.3
`
`(ID, at 17 (“Kenue was not asserted in the prior proceeding [i.e., IPR2014-00293],
`
`however.”)). Moreover, as the Board further found, “the decision not to institute
`
`an inter partes review in that [’293 IPR] proceeding was based on an entirely
`
`different record, including different arguments presented by Petitioner and
`
`different claims [and t]hus, we do not see the relevance of the prior determination.”
`
`(ID, at 17). There has been no development in the ’293 IPR since the Board’s
`
`Institution Decision that would lead the Board to now conclude otherwise.
`
`Likewise, in the ’951 IPR, “[t]he primary reference [for all claims was]
`
`Schofield PCT [WO 94/19212]”—not Vellacott. See IPR2015-00951, Paper 2
`
`(Petition), p. 12. And the ’951 IPR concerned Patent No. 8,637,801, which has a
`
`different specification than the ’001 Patent. (Compare, ’801 Patent at Ex. 1035
`
`with Ex. 1002). Whether the combination of Vellacott and Kenue renders the
`
`relevant ’001 Patent claims invalid does not turn on whether the Board agreed with
`
`TRW that Schofield ’212 and Kenue rendered invalid the different claims of a
`
`different patent in a different case involving different arguments. See e.g. Kearns,
`
`94 F.3d 1553, 1556 (Fed. Cir. 1996) (“In the case at bar it is not possible to show
`
`that the identical issue was presented in the sixteen patents that were not before the
`
`
`
`3 Further, Vellacott was not the primary reference in the ’293 IPR. See ’293
`
`IPR, Paper 17 (Revised Petition), p. 15 (“The primary reference is Bottesch….”).
`
`3
`
`

`
`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
`
`
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`[ ] court [in the prior action], as in the five patents that were; for each patent, by
`
`law, covers an independent and distinct invention.”).4
`
`Neither of the decisions that Magna relies upon qualify as final decisions for
`
`purposes of collateral estoppel, either. Magna cites 35 U.S.C. § 314(d) for the
`
`proposition that decisions regarding institution are final, but it ignores that section
`
`314(d) also makes clear that such decisions are “nonappealable.” This is
`
`significant because collateral estoppel “requires that the party against whom the
`
`estoppel is asserted have had the right, even if not exercised, to challenge on
`
`appeal the correctness of the earlier decision.” Interconnect Planning Corp. v.
`
`Feil, 774 F.2d 1132, 1135 (Fed. Cir. 1985); see also, RF Delaware, Inc. v. Pac.
`
`Keystone Techs., Inc., 326 F.3d 1255, 1261 (Fed. Cir. 2003). Moreover, under
`
`section 314(d), decisions to institute inter partes review are as “final” as decisions
`
`to deny institution of inter partes review. Thus, if decisions to deny institution are
`
`final judgments for the purposes of collateral estoppel, then so are decisions to
`
`institute. And Magna surely would not argue that once this trial on the ’001 Patent
`
`claims was instituted, the parties became collaterally estopped from “relitigating”
`
`the invalidity of the claims.
`
`
`
`4 Indeed, Magna’s argument that TRW previously proposed “the very
`
`modification” at issue here (POR, 2) is disingenuous because Schofield ’212
`
`discloses the VVL “ASIS 1011” (Ex. 1036, p. 24, ll. 15-17), and Magna
`
`vehemently argues that TRW has not established that Vellacott and ASIS 1011
`
`have “an express or implicit link…..” (Ex. 2003, ¶ 97).
`
`4
`
`

`
`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
`
`
`
`Even if the prior proceedings involved the identical issue and resulted in a
`
`final judgment for purposes of collateral estoppel, there still is no preclusion here
`
`because the “issue” was not “essential” to judgment. See In re Freeman, 30 F.3d
`
`at 1465. Specifically, in the ’951 IPR, each independent claim recited an “urban
`
`environment,” and the Board held that “[a]dditionally, we are not persuaded that
`
`Schofield PCT teaches the limitation ‘a determination is made that the equipped
`
`vehicle is being operated in an urban environment’ [as recited in every claim].”
`
`’951 IPR, Paper 8, p. 17. Similarly, in the ’293 IPR, the Board’s decision denying
`
`institution was based on multiple alternative grounds. See ’293 IPR, Paper 19, pp.
`
`12-34. Collateral estoppel is inapplicable for this reason, as well. See Masco Corp.
`
`v. United States, 303 F.3d 1316, 1331 (Fed. Cir. 2002).
`
`B. Only an automaton with no common sense could find that
`
`Vellacott and Kenue are not combinable.
`
`Magna makes numerous arguments in attempt to argue that Vellacott and
`
`Kenue are not combinable, but all of the arguments share a common theme—a lack
`
`of common sense, manifested primarily through exceedingly restrictive views of
`
`Vellacott and Kenue and an impossibly low view of the person of ordinary skill.
`
`In this way, Magna has divorced its analysis entirely from the proper obviousness
`
`framework.
`
`1.
`
`Reversing Vellacott’s camera to face forward would not
`
`have rendered the system unsuited for its intended purpose.
`
`Magna first asserts that reversing the field of vision of the system disclosed
`
`in Vellacott would have rendered the system unsuited for its purpose, which
`
`5
`
`

`
`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
`
`
`
`allegedly was to dim rearview and wing mirrors to reduce glare. (POR, at 20).
`
`Magna goes so far as to wonder how a dimmable rearview mirror is supposed to
`
`work if its camera faces forward. (See POR, at 19-25). By so doing, Magna
`
`frames the prior art far too narrowly and reduces the person of ordinary skill to a
`
`mere automaton.
`
`“A reference must be considered for everything it teaches by way of
`
`technology and is not limited to the particular invention it is describing and
`
`attempting to protect.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed.
`
`Cir. 2015) (internal quotation and citation omitted). In this regard, Vellacott is not
`
`narrowly tailored only to rearward facing anti-glare mirrors, as Magna argues, but
`
`instead “forms a complete machine-vision system” capable of implementing “most
`
`machine-vision applications.” (Ex. 1004, 113). The Board has already recognized
`
`as much, explaining in its institution decision that Vellacott “broadly discloses the
`
`use of a single-chip CMOS image sensor as an improvement on CCD image
`
`sensors of the time, without restriction on the types of devices for which the sensor
`
`could be used.” (ID, at 16 (emphasis added)). And the rebuttal declaration of
`
`TRW’s expert Lester J. Kozlowski, Ex. 1071 (“Kozl”), conclusively rebuts
`
`Magna’s facile attempts to establish that a “completely programmable machine
`
`vision system” (Ex. 1004, 113) would not be programmed by an artisan to do
`
`anything other than detect headlights in the rearward field of view so as to dim the
`
`mirrors. (Kozl, ¶¶ 142-152, 214-218, 236-243, 269-272, 280, 285-288).
`
`6
`
`

`
`Case IPR2015-00436 to -00439
`of U.S. Patent No. 8,599,001
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`
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`Unsurprisingly then, Vellacott’s Imputer, has the same principle of operation
`
`and basic function—capture an image, process the image data to detect objects,
`
`and send a control signal based on the image processing—irrespective of whether
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`it is used in a forward facing configuration or a rearward facing configuration.
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`(Kozl, ¶ 239).
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`Under these circumstances, Magna’s frustrated purpose argument simply
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`does not apply. In fact, the Board has repeatedly rejected the argument Magna
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`now makes under circumstances almost identical to those here. In Ex Parte
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`Ratnakar, Appeal No. 2011-002978, 2013 WL 1121825, at *1 (Patent Tr. & App.
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`Bd. Feb. 22, 2013), for example, the Board addressed an invention directed to dual
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`view endoscopes providing both forward and rearward views. The Examiner
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`rejected claims based in part upon a reference disclosing a device with two
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`videoscopes having the same forward view. Id. at *3-4. On appeal to the Board,
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`the applicant argued that the Examiner’s proposed modification to this reference—
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`namely, modifying it so that one videoscope views different tissue in an opposite
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`direction from the other videoscope—would render it unsatisfactory for its
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`intended purpose. Id. at *5.
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`The Board rejected this argument, focusing not on the specific invention of
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`the reference but its teachings in regards to the relevant technological principles:
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`“[w]hile the proposed modification would result in a device that has additional
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`capabilities with the flexibility of videoscope 2b being capable of turning 180° to
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`view tissue in an opposite direction from videoscope 2a, the modified device still
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`would operate according to the same principles as the unmodified device.” Ex
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`Parte Ratnakar, 2013 WL 1121825 at *5.
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`This Board’s predecessor applied the same reasoning in Ex Parte Richard T.
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`Skiffington and Eliezer Zomer, APL 2008-3855, 2008 WL 4759865, at *1 (Bd. Pat.
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`App. & Interf. Oct. 30, 2008), which addressed an invention directed to a unit dose
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`reagent chamber. The Examiner rejected claims based in part on a reference
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`disclosing a device for a self-contained solid phase immuno-diffusion assay. Id. at
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`*3. On appeal, the applicant argued that the Examiner’s proposed modification to
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`this reference rendered it unsuitable for its intended purpose because the
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`modification would prevent the device from being capable of performing an
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`immuno-diffusion assay. Id. at *4.
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`The Board rejected this argument as “not well taken.” Ex Parte Skiffington,
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`2008 WL 4759865 at *4. Specifically, the Board explained that “[w]hile the
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`proposed modification would result in a device no longer capable of performing
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`the immuno-diffusion assay objective, the modified device still would operate
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`according to the same principles as the unmodified device.” Id. at *5.
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`The Federal Circuit recently applied similar reasoning, in In re Urbanski, --
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`F.3d --, 2016 WL97522 (Fed. Cir. Jan. 8, 2016). The Court there rejected an
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`applicant’s argument that because modifying a prior art process would have
`
`rendered the modified process inoperable for the reference’s intended purpose, the
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`reference taught away from the claimed method. Id. at *5. Focusing on the
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`broader teachings of the prior art rather than the specific embodiments disclosed
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`therein, the Court explained that “one of ordinary skill would have been motivated
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`to pursue the desirable properties taught by Wong, even if that meant foregoing the
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`benefit taught by Gross.”5 Id.
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`These authorities are directly on-point, and are fatal to Magna’s position.
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`They make clear that the issue here is not whether a forward-facing system is
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`capable of detecting lights in a rear-facing field of vision, as Magna myopically
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`suggests, but rather whether facing Vellacott’s system in a forward view would
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`change its manner of operation or render its technology unusable. And, just as the
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`modifications to the references in Ex Parte Ratnakar, Ex Parte Skiffington, and In
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`re Urbanski did not alter the principles of operation of those references—even as
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`certain embodiments no longer functioned as originally intended—modifying
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`Vellacott’s camera/Imputer system to face forward does not alter the principles of
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`its operation. The teachings of Vellacott in regards to its technology remain fully
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`applicable, and Vellacott was easily adapted to detect headlights (as taught by
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`Vellacott) in the forward field of view and also to detect lane markers as taught by
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`Kenue because the Vellacott Imputer was fully programmable. (Kozl, ¶¶ 239, 273-
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`280, 282, 285-289).6
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`
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`5 The Court also noted that the claims at issue did not require the benefit that
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`is arguably lost by the combination. 2016 WL97522 at *5.
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`6 Indeed, even if the Board holds that the Imputer’s express purpose is to
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`dim the vehicle’s mirrors, Magna’s argument still fails. (Kozl, ¶¶ 240-242).
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`Magna’s argument also improperly minimizes the person of ordinary skill.
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`Indeed, Magna posits a person of ordinary skill who is capable only of viewing
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`references in isolation, without regard to any of the motivations other references
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`might provide or purposes that combinations of references might suggest. This is
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`precisely what leads Magna to conclude that, faced with Vellacott and Kenue, a
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`person of ordinary skill could only have envisioned a useless dimmable rearview
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`mirror system with a forward facing CMOS sensor or realized the alleged
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`impossibility of a lane detection system implemented on the VVL Imputer. (See
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`POR, at 18-25). But the term “Imputer” stands for “imaging computer” (Kozl, ¶¶
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`151, 274), and Magna’s arguments that a skilled artisan would not have found it
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`obvious to program a programmable computer require the artisan’s willing
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`sustention to logic. (Kozl, ¶ 152). Magna’s robotic, clunky conception of ordinary
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`skill “improperly turn[s] the person of ordinary skill in the art into an ‘automaton’
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`that can only add pieces of prior art.” Transocean Offshore Deepwater Drilling,
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`Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1304 (Fed. Cir. 2010).
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`In the end, Magna’s argument simply does not follow the proper
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`obviousness framework or principles, nor does it properly account for the actual
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`teachings of Vellacott and Kenue. Under a proper framework and view of the
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`references, Vellacott and Kenue are plainly combinable.
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`2.
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`There was a reasonable expectation of success in combining
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`Vellacott with Kenue.
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`Magna’s narrow view of the prior art and low view of the person of ordinary
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`skill again provide the foundation for its argument that there was no reasonable
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`expectation of success in combining Vellacott and Kenue. For many of the same
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`reasons already explained, Magna’s erroneous framework is fatal to this argument,
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`as well.
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`Magna again attempts to distance Vellacott from the ‘001 Patent via the
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`entirely semantic argument that Vellacott never mentions the specific Model
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`#ASIS 1011 cited in the ’001 Patent. But the Board has already held that this fact
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`is no barrier to obviousness given the substantive disclosures of Vellacott and
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`Kenue. (ID, at 14-15). Further, the Imputer contains a passive pixel CMOS array
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`from VVL (Ex. 2003, ¶ 82), and Mr. Kozlowski confirms that the only CMOS
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`array disclosed in the ’001 Patent is a passive pixel CMOS array from VVL. (Kozl,
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`¶¶ 190-199). Thus, Magna’s arguments that there are “several notable differences
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`between the respective imagers [of the ’001 Patent and Vellacott]” (POR, at 26)
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`such that the application of the Imputer to the claims as suggested by Dr. Miller
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`would have had no reasonable expectation of success is unavailing. (See Kozl, ¶¶
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`244, 247-265, 267-272).
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`Magna also attempts to denigrate the efficacy of the Vellacott system, but
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`this argument craters under its own weight. At the most basic level, Magna’s
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`argument simply refuses to accept Vellacott on its own terms. Thus, on Magna’s
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`view, Vellacott cannot be trusted when it expressly states that its CMOS
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`technology is a direct improvement over and replacement for CCD photosensor
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`arrays. (Ex. 1004, 111-112). Indeed, to believe Magna, Vellacott thoroughly
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`denigrates itself.
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`This nonsensical view of Vellacott is simply too good to be true for Magna,
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`however. For example, while Magna argues that Vellacott teaches that “VVL’s
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`design
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`suffered
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`from noise and
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`sensitivity problems that ‘could not
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`match the performance of CCDs’”
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`(POR, at 5, 26), Vellacott actually says
`
`this about “VVL’s
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`first CMOS
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`cameras”—not
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`the VVL
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`design
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`presented by Vellacott
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`itself. (Ex.
`
`1004, 112). The earlier problem was
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`attributable to “fixed pattern noise
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`effects,” but Vellacott states that VVL
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`had “overcome this.” (Ex. 1004, 112). By 1991 VVL had produced a passive
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`pixel imager that was prospectively useful in “automotive applications” (Ex. 1053-
`
`008) and was able to “match the performance of CCD cameras” (Ex. 1053-009).
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`Indeed, in 1992, the VVL team noted that its aim was to create CMOS “array
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`image sensors which match the performance of CCD cameras [and that it] ha[d]
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`succeeded in this aim….” (Ex. 1053-009; see Table 1 at 014 reproduced here).
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`Mr. Kozlowski likewise confirms that by the alleged p