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 IPR2015-00436
`Patent 8,599,001
`__________________
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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 & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`TABLE OF CONTENTS
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`I.
`II.
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`Introduction ..................................................................................................... 1
`The ’001 patent ............................................................................................... 4
`A.
`Summary of the ’001 patent. ................................................................. 4
`B.
`purely to the method of operation ......................................................... 4
`III. TRW’s Petition and Miller’s Declaration contain irreparable factual and
`legal flaws ....................................................................................................... 8
`A.
`specification admits using Vellacott’s system. ..................................... 9
`B.
`of the Petition ...................................................................................... 11
`C.
`the Declaration. ................................................................................... 12
`D. Miller makes many fatal mistakes in his Declaration. ........................ 14
`IV. TRW’s Petition failed to meet the minimum threshold showing that TRW is
`likely to prevail on the asserted Grounds ..................................................... 15
`A.
`Kenue ................................................................................................... 16
`1.
`TRW’s core asserted references ............................................... 17
`(a) Vellacott ......................................................................... 17
`(b) Kenue ............................................................................. 18
`2.
`the current facts. ....................................................................... 19
`
`TRW improperly relies on precedent as if they provide per
`se obviousness in asserting a combination of Vellacott and
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`TRW errs in reducing the differences between the forward-
`facing and rear-facing embodiments of the ’001 patent
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`TRW’s Petition misrepresents that the ’001 patent
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`The Miller Declaration fails to cure the misrepresentations
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`TRW’s Petition fails to meet the threshold showing for
`institution and rather improperly incorporates by reference
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`TRW improperly asserts per se rules of obviousness
`without providing any analysis of how they applied to
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`i
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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`motivation to combine since it routinely turns to
`documents not found in the Grounds to support its
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`TRW ignores the technical differences between
`Vellacott’s CMOS and Kenue’s CCD system when
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`The Petition lacks adequate evidentiary support for the
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`TRW fails to provide a threshold showing that a POSA
`would have combined Yanagawa’s color system with
`Vellacott and Kenue’s black and white systems for the
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`TRW failed to fully and properly consider the scope of the
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`(a) Gazda ............................................................................. 20
`(b)
`Japikse ........................................................................... 22
`(c) Applying a known technique to a known device .......... 23
`(d) Use of a known technique to improve similar
`devices ........................................................................... 26
`3. Miller does not cure the deficiencies regarding lack of
`allegations. ............................................................................... 28
`4.
`alleging the references should be combined. ........................... 29
`grounds challenging claims 15, 28, 35-38, 46, and 47 ........................ 31
`Grounds challenging dependent claims 6-10, 32, and 34. .................. 32
`claims before applying the asserted references ................................... 33
`1.
`relies on Miller’s Declaration .................................................. 34
`2.
`plurality of exposure periods” of claim 1 ................................ 35
`3.
`as merely “functional limitations” ........................................... 37
`the Miller Declaration. ........................................................................ 39
`
`Even if combinable as alleged, TRW failed to meet the
`threshold showing how the disparate language of the applied
`references meets the language of the claims, even in view of
`
`TRW ignores the requirement for the Petition to
`provide claim construction, and rather improperly
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`TRW’s fails to construe the term “operable at a
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`TRW’s misrepresents that claim terms can be ignored
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`ii
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`B.
`C.
`D.
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`E.
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`

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`1.
`2.
`3.
`4.
`5.
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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`The Petition fails to provide sufficient evidence that
`Vellacott discloses “a module attached at the
`
`TRW failed to explain how Vellacott teaches a
`“photosensor array [that] is operable at a plurality of
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`TRW failed to show Vellacott teaches a vision system
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`TRW failed to cure the deficiencies of Vellacott with
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`TRW failed to show that Vellacott and Kenue, alone
`or in combination, teach features in several dependent
`
`TRW fails to meet the threshold showing for
`the configuration of the claimed arrays as
`
`windshield” .............................................................................. 39
`exposure periods” ..................................................................... 41
`to “detect an object” as recited in claim 1 ............................... 43
`the alleged AAPA. ................................................................... 44
`claims ....................................................................................... 46
`(a)
`recited in claims 43, 46, and 47 ..................................... 46
`(b)
`claim 16 ......................................................................... 48
`(c) Claims 17-21 .................................................................. 49
`(d) Claim 22 ......................................................................... 51
`(e) Claim 23 ......................................................................... 52
`(f)
`claim 51 ......................................................................... 52
`(g)
`equipped vehicle,” as recited in claim 52 ...................... 55
`
`TRW fails to meet the threshold showing for
`“said imager views through the windshield of
`the equipped vehicle at a windshield area that is
`swept by a windshield wiper,” as recited in
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`TRW fails to meet the threshold showing for
`“said module includes a heat sink” as recited in
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`TRW fails to meet the threshold showing for
`“said module includes a connector for
`electrically connecting to a power source of the
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`iii
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`

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`V.
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`Conclusion .................................................................................................... 56
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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`iv
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`

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`Cases
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`IPR2015-00436 for U.S. Patent No. 8,599,001
`
`TABLE OF AUTHORITIES
`
`Application of Gazda
`219 F.2d 449 (C.C.P.A. 1955) ....................................................................... 21
`
`Application of Japikse
`181 F.2d 1019 (C.C.P.A. 1950) ..................................................................... 22
`
`Application of Ruff,
`256 F.2d 590 (C.C.P.A. 1958) ................................................................. 45, 46
`
`Boston Scientific v. Cordis
`554 F.3d 982 (Fed. Cir. 2009) ....................................................................... 10
`
`Cisco Systems, Inc. v. C-Cation Techs., LLC
`IPR2014-00454 (P.T.A.B. Aug. 29, 2014) ...................................................... 3
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.
`567 F.3d 1314 (Fed. Cir. 2009) ..................................................................... 23
`
`DeSilva v. DiLeonardi
`181 F.3d 865 (7th Cir. 1999 ........................................................................ 2, 3
`
`Ex parte Papst-Motoren
`1 U.S.P.Q.2d 1655 (B.P.A.I. 1986) ............................................................... 36
`
`Fidelity National Information Services, Inc. v. Data Treasury Corp.
`IPR2014-00489, Institution Decision (P.T.A.B. Aug. 13, 2014) .................. 13
`
`Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC
`618 F.3d 1294 (Fed. Cir. 2010) ..................................................................... 17
`
`Graham v. John Deere Co.
`383 U.S. 1 (1966) ........................................................................................... 15
`
`Hewlett-Packard Co. v. Bausch & Lomb, Inc.,
`909 F.2d 1464 (Fed. Cir. 1990) ..................................................................... 38
`
`In re Gordon
`733 F.2d 900 (Fed. Cir. 1984) ................................................................. 17, 23
`
`v
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`

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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`In re Kahn
`441 F.3d 977 (Fed. Cir. 2006) ....................................................................... 16
`
`In re Ochiai
`71 F.3d 1565 (Fed. Cir. 1995) ................................................................. 19, 20
`
`In re Stencel
`828 F.2d 751 (Fed. Cir. 1987) ....................................................................... 38
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ..................................................................... 38
`
`KSR International Co. v. Teleflex Inc.
`550 U.S. 398 (2007)..................................................................... 15, 16, 23, 40
`
`Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC
` IPR2014-00547, Institution Decision (P.T.A.B. Dec. 3, 2014) ................... 14
`
`Microsoft Corp. v. Proxyconn, Inc.
`IPR2012-00026, Institution Decision (P.T.A.B. Dec. 21, 2012) .................. 34
`
`Synopsys, Inc. v. Mentor Graphics
`IPR2012-00041, Institution Decision (P.T.A.B. Feb. 22, 2013) ................... 32
`
`TRW Automotive US LLC v. Magna Electronics Inc.
`IPR2014-00263, Institution Decision (P.T.A.B. Dec. 17, 2013) .................. 15
`
`35 U.S.C. § 311 ........................................................................................................ 11
`
`Statutes
`Rules
`
`37 C.F.R. § 42.104 ............................................................................................... 3, 40
`
`37 C.F.R. § 42.104(b) .............................................................................................. 35
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`37 C.F.R. § 42.22(a)(2) .................................................................................. 3, 12, 13
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`37 C.F.R. § 42.6(a)(3) .................................................................................... 3, 12, 13
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`Other Authorities
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`M.P.E.P. § 2144 ....................................................................................................... 19
`
`vi
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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`EXHIBIT LIST
`
`Description
`Definition of “integrated,” Merriam-Webster Online Dictionary,
`accessed at http://www.merriam-webster.com/dictionary/integrated
`Definition of “plurality,” Merriam-Webster Online Dictionary,
`accessed at http://www.thefreedictionary.com/plurality
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`vii
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`Exhibit No.
`2001
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`2002
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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`I.
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`Introduction
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`The Board should deny TRW’s Petition (“Pet.”) because TRW failed to
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`provide a threshold showing there is a reasonable likelihood of prevailing in its
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`challenge against claim 1 of U.S. Patent 8,599,001 (“’001 patent”). Though the
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`Grounds asserted against many other claims are in their own respect deficient, all
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`other challenged claims, claims 2-10, 15-23, 28, 32, 34-40, and 42-55, depend
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`from claim 1. Thus, the deficiencies of the Ground asserted against claim 1 fatally
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`infect the Petition as a whole.
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`TRW’s obviousness challenge against claim 1 lacks sufficient showing a
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`person of ordinary skill in the art at the time of the invention (“POSA”) would
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`have found it obvious to combine the references, and even if combinable, that the
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`references would render claim 1 obvious. Though TRW proffers four alleged
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`rationales for combining Vellacott and Kenue, all fail to provide articulated
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`reasoning with rational underpinning as to why a POSA would have made the
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`modifications proposed. Specifically, TRW contends that it would have been
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`obvious to a POSA to re-orient Vellacott’s rearward-facing sensor in a rearview
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`mirror to be forward-facing – despite the fact that the sensor’s explicit purpose is
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`to recognize light from headlamps in the rearward field of view and automatically
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`dim the rearview mirror. Such a modification to Vellacott’s system would destroy
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`1
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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`its intended purpose. And TRW’s blanket reliance on unrelated case law alleging it
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`renders the claims per se obvious, without further explanation, is misplaced.
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`TRW also failed to bridge the gap between its proffered evidentiary support,
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`the Grounds challenging the claims, and the language of the claims themselves.
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`TRW failed to sufficiently address several features of the challenged claims, such
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`as an imager “disposed in a module attached at the windshield of the equipped
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`vehicle” ((Pet. at 19 (emphasis in original).) and a photosensor array “operable at a
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`plurality of exposure periods.” (Id. at 20 (emphasis in original).) Instead, TRW
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`simply announces that key elements of the claims are present in the references, or
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`that it would have been obvious to combine the references, without providing the
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`required analysis or explanation. TRW was required to provide a threshold
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`showing of relevant evidence. But TRW shirked its burden and left Magna and the
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`Board to fill these gaps for themselves. “A brief must make all arguments
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`accessible to the judges, rather than ask them to play archaeologist with the
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`record.” 1
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`TRW’s evidentiary failures are compounded by the Petition’s utter lack of
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`claim construction and illicit attempt to incorporate reference information or
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`arguments from the Declaration into the Petition. The Petition ignores the
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`requirement to construe the claims and to explain how the construed claims are
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`1 DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999.
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`2
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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`unpatentable under 37 C.F.R. § 42.104. In addition, the Petition circumvents the
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`PTO’s page limits by citing to the Declaration for explanation, evidence, and
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`analysis required to present in the Petition under 37 C.F.R. §§ 42.22(a)(2) and
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`42.6(a)(3). Such flagrant disregard for the rules warrants denial of the Petition.2
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`Nonetheless, the evidentiary gaps and statutory deficiencies of the Petition
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`cannot be cured by the conclusory Declaration of Jeffery A. Miller. The declarant
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`repeatedly fails to substantiate the contentions of the Petition or inappropriately
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`relies on alleged teachings of unavailable evidence. Given this lack of evidentiary
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`foundation, the Declaration does not deserve any weight.
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`2 Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (P.T.A.B.
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`Aug. 29, 2014) (Institution Decision). (informative). As explained in Cisco,
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`citations to “large portions of another document, without sufficient explanation of
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`those portions, amounts to incorporation by reference.” Id. at 8. Similarly, Cisco
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`explains that the “practice of citing [a] Declaration to support conclusory
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`statements that are not otherwise supported in the Petition also amounts to
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`incorporation by reference.” Id. at 9. Such incorporation by reference is improper:
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`“[a]rguments must not be incorporated by reference from one document into
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`another document.” 37 C.F.R. § 42.6(a)(3). Incorporation by reference “amounts to
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`a self-help increase in the length of the [] brief.” DeSilva, 181 F.3d at 866.
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`3
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`IPPR2015-000436 for UU.S. Patent
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`No. 8,5999,001
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`II. TThe ’001 patent
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`atent. he ’001 paSummary of th
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`The ’001 paatent is dir
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`controlss vehicle fuunctions, ee.g. headligght control
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`taillightts and oncooming headdlights. (’0001 patent,, 31:60-33::67, 37:4-88.)
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`TThe ’001 paatent disclooses a speccialized loggic and conntrol circuiit resultingg in
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`a vehicuular systemm that was and is ablee to effectivvely differrentiate heaadlights annd
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`(Id. at 31:660-37:17.)
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`patentedd system mmay be inteegrated intoo vehicle ssystems to
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`operate,, e.g., vehicle lightingg, windshield wiperss, a defogg
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`control sysstems that
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`collisionn avoidancce system. (Id. at 36:444-37:3.) TThe photossensor arraay of the
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`patentedd system uuses a pluraality of expposure periiods when
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`capturing
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`processing by the image proocessor. (Idd. at 16:62--67.)
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`TRWW errs in rreducing thhe differennces betw
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`rward-faccing
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`and rrear-facinng embodimments of tthe ’001 paatent pureely to the
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`methhod of ope
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` FFIGs. 6 andd 6A of thee ’001
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`a rearwaard-facing sensor. F
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`shows aan examplee embodimment for a
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`4
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`IPPR2015-000436 for UU.S. Patent
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`No. 8,5999,001
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`forwardd facing sennsor.3 The figures illuustrate struuctural diffferences beetween thee
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`embodimments. Forr example, logic circuuit 46, digiital-to-anallog converrter 52, or
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`logic annd control ccircuit 34
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`contraryy to TRW’s assertionn,
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`circuit 34
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`input/ouutputs in thhe
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`embodimments. Thee differencces among the emboddiments aree not “pureely
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`functionnal,” as alleged. Thiss is becausee two contrrol circuitss that have
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`input/ouutputs, andd, thus, are different circuits at
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`least in thiis regard.
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`TTRW assertts there aree no “structural differrences” beetween the
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`rear-faccing emboddiments. (PPet. at 13.)
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`To the conntrary, the
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`3 TRW repeeatedly alleeges that thhe ’001 pattent presennts “identiccal” structuures
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`for its ““rearward ffacing” andd “forwardd facing” seensors. Forr example,
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`admits tthat the phhotosensor array 32 annd the logiic and conttrol circuitt 34 are thee
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`same ass for the reaarward emmbodiment.” (Petitionn, p. 16 (emmphasis addded).) TRWW,
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`howeveer, ignores that actuall teachings of FIGs. 66 and 6B.
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`5
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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`FIG. 6B shows another embodiment of a stand-alone vehicle lighting
`control system, which has a number of the components identified with
`respect to FIG. 6. The vehicle lighting control system of FIG. 6B may
`also be integrated with automatic rearview mirror system and vehicle
`interior monitoring system described herein.” (’001 patent, 33:7-12
`(emphasis added).)
`By stating that a forward facing camera embodiment may be “integrated
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`with” the automatic rearview mirror,4 the ’001 patent is not stating that
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`“photosensor array 32 and the logic and control circuit 34 are the same as for the
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`rearward embodiment,” as alleged by the Petition. (Pet. at 12, emphasis added).
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`4 “Integrated” is dictionary-defined to mean “having different parts working
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`together as a unit.” (Ex. 2001.) The ’001 patent’s teaching that the vehicle lighting
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`control system of FIG. 6B may be integrated with an automatic rearview mirror
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`system teaches separate parts working together as a unit—and thus teaches that the
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`separateness of the vehicle lighting control system of FIG. 6B is maintained and
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`preserved in such an integration. TRW errs in suggesting interchangeability of the
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`forward-facing vehicle lighting control system of FIG. 6B with any other part or
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`system, such as a rearward-facing electrochromic mirror control or an interior
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`cabin monitoring system that also may be accommodated in an interior rearview
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`mirror assembly.
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`6
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`

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`IPR2015-00436 for U.S. Patent No. 8,599,001
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`TRW contends that “[t]he ’001 Patent thus admits that its method of
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`operating the forward-facing image sensor (a known device) is at least ‘generally
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`the same’ as its method for operating the rearward-facing image sensor” (Pet. at
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`13.) TRW reasons that “[t]he method for processing the forward field of view
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`image is the same as that shown through step S140 in the flow chart of FIG. 7A,
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`and is generally the same as to steps S150 and S160 as detailed in the flow chart
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`FIG. 8A, except that steps S155, S156 and S162 are excluded.” (Id., citing the ’001
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`patent, 33:67-34:5.)
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`But the section of the ’001 patent relied on by TRW merely points to some
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`similarities that may exist between the method of operating the forward facing
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`camera and the rear-facing camera. And TRW ignores that the ’001 patent presents
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`different methods of operation and different functions for the rearward-facing and
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`forward-facing sensors. For example, the ’001 patent presents flowcharts of FIGs.
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`13A, 13B, 13C, and 13D as example embodiments for methods of operation of a
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`forward facing sensor, which are not the same as the methods in other flowcharts,
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`such as flowcharts of FIGs. 7-9, showing methods of operation of a rear facing
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`sensor.
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`TRW erroneously asserts that a forward facing camera operable for
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`automatic headlamp control is similar or identical to a rear facing camera system
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`for dimming an electro-chromic mirror. Plainly, such is not so. For example, a
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`rearward-facing camera system such as in Vellacott for electro-chromic mirror
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`control is never required to distinguish headlights from taillights. Also, for
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`example, the ’001 patent extensively describes a vehicle interior monitoring system
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`utilizing a rearward-facing photosensor array for detection and determination of
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`seat occupancy and the like. (’001 patent, 41:12-45:18.) Again, such a rearward-
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`facing camera need not distinguish headlights from taillights.
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`TRW’s erroneous contentions regarding the forward-facing and rearward-
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`facing embodiments of the ’001 patent fly in the face of what those embodiments
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`actually do. For TRW to contend that the ’001 patent presents nearly identical
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`structures and methods of operation for its rearward-facing and forward-facing
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`sensors is untenable.
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`III. TRW’s Petition and Miller’s Declaration contain irreparable factual
`and legal flaws
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`TRW’s Petition fails to meet the statutory threshold for institution for at
`
`least two reasons: first, TRW is wrong to allege that the ’001 patent specification
`
`uses Vellacott’s system, and second, rather than meeting the statutory requirement
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`for the Petition to stand on its own, TRW makes unsupported or unexplained
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`conclusions in the Petition and improperly incorporates by reference the
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`Declaration to fill the gaps. But the Declaration fails to fill those evidentiary gaps.
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`Dr. Miller’s Declaration is fatally flawed. The Declaration frequently
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`misrepresents teachings of the asserted references. It makes arbitrary and at times
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`contradictory assertions to reach any conclusion necessary to allege that the
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`references teach features of the ’001 patent claims.
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`A. TRW’s Petition misrepresents that the ’001 patent specification
`admits using Vellacott’s system.
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`TRW asserts that the ’001 patent claims a vehicular vision system disclosed
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`by Vellacott. (Pet. at 9.) TRW’s assertion appears to be based on the ’001 patent
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`stating “[a]n example of such a photosensor array 32 is the VLSI Vision Limited
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`(VVL) Single Chip Video Camera Model #ASIS 1011.” (’001 patent, 13:30-37
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`(emphasis added)). TRW attempts to twist this into an admission by the patent
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`owner that the claimed invention is the same as the CMOS camera disclosed by
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`Vellacott. For example, TRW states that “the text of the ‘001 patent expressly
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`admits that the claimed CMOS camera array (photosensor array 32 or light sensing
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`and logic circuit 26) is the very imputer described by Vellacott.” (Pet. at 6.) TRW’s
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`assertion is unfounded, and is mere speculation lacking evidentiary support.
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`The ’001 patent does not discuss Vellacott, and Vellacott does not mention
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`#ASIS 1011. Thus, there is no explicit connection between the disclosures and
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`certainly no applicant admission with respect to Vellacott.
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`TRW attempts to circumvent the required presentation of proper evidence.
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`The Miller Declaration attempts to draw a connection between the example
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`photosensor mentioned in the ’001 patent and Vellacott by pointing to two
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`references that are not part of the Grounds. But the purported connection is not
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`germane to the question of obviousness. If TRW wanted to rely on any teachings in
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`these references, it should have incorporated them in the Grounds and provided
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`analysis as to how and why a POSA would have combined such teachings with
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`Vellacott.
`
`TRW fails to recognize that, while Vellacott may be relied upon for all that
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`it teaches, that does not permit TRW to rely upon various embodiments as if they
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`were a single system without more.5 TRW contends that ASIS stands for
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`“Application-Specific Interconnect Structure,” implying that each model was
`
`developed for a specific application. So even if one of the embodiments of
`
`Vellacott was describing ASIS #1011 (and Vellacott does not so describe), TRW
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`has failed to proffer any connection to the specific electro-chromic mirror
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`application of Vellacott that is relied upon by TRW in the proposed Grounds.
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`TRW critically mistakes an example component that may be used in
`
`implementing the claimed invention for the claimed invention itself. Conventional
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`understanding of patent disclosures is that the claimed invention requires more
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`than any single exemplary component. But TRW does not evaluate any
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`modifications to a known component that may constitute invention. Instead, TRW
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`5 Boston Scientific v. Cordis, 554 F.3d 982 (Fed. Cir. 2009). (holding that a
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`close nexus between embodiments in a reference is a requirement to demonstrate
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`obviousness to combine them.)
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`presumes that the patented invention consists of pointing VVL’s ASIS #1011 in a
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`particular direction. TRW’s characterization is simply unfounded.
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`B.
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`The Miller Declaration fails to cure the misrepresentations of the
`Petition
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`Miller’s explanation regarding this alleged connection between the ’001
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`patent invention and Vellacott is also inapt. Grounds for inter partes review may
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`only be based on “prior art consisting of patent and printed publications.”6 To the
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`extent that TRW relies on an actual device (e.g., ASIS #1011)7, such a Ground is
`
`not proper for inter partes review. Accordingly, even if TRW could show that
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`Vellacott was describing ASIS #1011 (and TRW does not and cannot), TRW is
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`nonetheless limited to the teachings actually disclosed by Vellacott. If TRW
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`wished to rely on the references provided in the appendices of the Miller
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`Declaration, such references should have been incorporated into the proposed
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`Grounds along with an appropriate explanation regarding their relevance. Instead
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`6 35 U.S.C. § 311(b).
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`7 See Miller Dec., ¶28 (“‘As of last year [1993], the Peach chip[14] (ASIS
`
`1011-B) was separately available for under £30.’ Paradiso is thus describing the
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`same Peach camera with supporting electronics (ASIS 1011) that constitutes the
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`VVL imputer described by Vellacott.” (citation omitted, emphasis and edit in
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`original).
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`of pointing to a proper factual basis for its position, TRW inappropriately relies on
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`alleged evidence exceeding the scope of review.
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`Even if TRW were permitted to rely on references of the Declaration’s
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`appendices, TRW failed to sufficiently explain any nexus between the VVL ASIS
`
`#1011, Vellacott, and the claimed invention. TRW attempts to link these through
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`Vellacott’s singular mention of “VVL’s Peach camera.” See Vellacott, p. 112;
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`Miller Dec., ¶26. But TRW never explains how the “Peach camera,” alleged to be
`
`the VVL ASIS #1011-B, is linked to the actual portion of Vellacott relied upon –
`
`i.e., an implementation in an electro-chromic rearview mirror. In addition, TRW
`
`fails to substantiate any contention that the claimed invention is encompassed by
`
`the “Peach camera,” VVL ASIS #1011-B, or VVL ASIS #1011. Instead, TRW
`
`erroneously treats the various embodiments of Vellacott as a single embodiment
`
`and boldly presumes that these are the same as the claimed invention based on the
`
`faintest traces of argument.
`
`C. TRW’s Petition fails to meet the threshold showing for institution
`and rather improperly incorporates by reference the Declaration.
`
`TRW’s Petition states that its discussion stands on its own. (Pet. at 6.) Yet,
`
`in an apparent effort to avoid the page limits, the Petition relies on the Declaration
`
`to fill the gaps. Such a tactic is in essence the prohibited incorporation by reference
`
`of the Declaration. 37 C.F.R. §§ 42.22(a)(2) and 42.6(a)(3).
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`In IPR2014-004898, the Board denied institution explaining that 37 C.F.R.
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`§§ 42.22(a)(2) and 42.6(a)(3) prohibits incorporating by reference information or
`
`arguments made in a supporting document, such as a declaration. The Board
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`explained that “among other reasons, doing so would permit the use of declarations
`
`to circumvent the page limits that apply to petitions.”9
`
`In this case, the Petition conclusorily states claims 2, 4, 5, 16, 23, 28, 35-38,
`
`45, and 51-53 are obvious without presenting obviousness analysis and instead
`
`referring the reader to the Declaration. (Pet. at 23, 25, 26, 27, 28-30, 34, 37, and
`
`38.) The Declaration, however, relies on new references not used in the Petition.
`
`For example, to allegedly show “said imager views through … a windshield area
`
`that is swept by a windshield wiper,” as recited in claim 16, the Petition
`
`conclusorily states “[r]earview mirrors were well-known … to be located on the
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`windshield in an area that is swept by the windshield wipers.” (Id. at 27.) And the
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`Declaration brings in two new references to fill the gap. (Miller Dec., ¶157; see
`
`also ¶¶126, 127, and 198 also adding additional evidence not found in the
`
`Petition.)
`
`
`8 See Fidelity National Information Services, Inc. v. Data Treasury Corp.,
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`IPR2014-00489, Institution Decision, p. 9 (P.T.A.B. Aug. 13, 2014).
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`9 Id.
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`These exemplary uses of improper incorporation by reference are
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`irreparable, such that the Grounds violate the requirement that the specific grounds
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`and evidence be provided in the petition.
`
`D. Miller makes many fatal mistakes in his Declaration.
`Miller’s Declaration makes many fatal mistakes. For example, Miller
`
`contradicts himself throughout the Declaration and frequently draws obviousness
`
`conclusions from his own perspective, i.e., using “I” multiple times, rather than
`
`from the perspective of a POSA. These mistakes undermine his contention that the
`
`challenged claims are obvious to a POSA.
`
`In one ex