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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
`____________
`
`Case IPR2015-00437
`Patent 8,599,001
`__________________
`
`PATENT OWNER MAGNA ELECTRONICS INC.’S PRELIMINARY
`RESPONSE TO PETITION PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`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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`IPR2015-00437 for U.S. Patent No. 8,599,001
`
`TABLE OF CONTENTS
`
`
`
`I.
`II.
`
`TRW errs in reducing the differences between the forward-
`facing and rear-facing embodiments of the ’001 patent
`
`TRW’s Petition misrepresents that the ’001 patent
`
`The Miller Declaration fails to cure the misrepresentations
`
`Introduction ..................................................................................................... 1
`The ’001 patent ............................................................................................... 4
`A.
`Summary of the ’001 patent. ................................................................. 4
`B.
`purely to the methods 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. ........................ 15
`IV. TRW’s Petition failed to meet the minimum threshold showing that TRW is
`likely to prevail on the asserted Grounds ..................................................... 16
`A.
`in asserting a combination of Vellacott and Kenue ............................ 17
`1.
`TRW’s core asserted references ............................................... 18
`(a) Vellacott ......................................................................... 18
`(b) Kenue ............................................................................. 19
`2.
`combination of Vellacott and Kenue. ...................................... 20
`
`TRW’s Petition fails to meet the threshold showing for
`institution and rather improperly incorporates by reference
`
`TRW improperly relies on precedent for per se obviousness
`
`TRW improperly asserts per se rules of obviousness
`without providing requisite analysis as to the
`
`i
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`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
`
`motivation to combine since he routinely turns to
`documents not found in the Grounds to support his
`
`The Declaration fails to support the proposed
`
`TRW failed to fully and properly consider the scope of the
`
`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
`Grounds challenging dependent claims 61-63, 68-69, 71,
`
`(a) Gazda ............................................................................. 22
`(b)
`Japikse ........................................................................... 23
`(c) Applying a known technique to a known device .......... 24
`(d) Use of a known technique to improve similar
`devices ........................................................................... 28
`3. Miller does not cure the deficiencies regarding lack of
`allegations. ............................................................................... 30
`4.
`combination of Vellacott and Kenue ....................................... 31
`and 77. ................................................................................................. 32
`claims before applying the asserted references ................................... 33
`1.
`Miller’s Declaration ................................................................. 34
`2.
`exposure period” of claim 75 ................................................... 35
`3.
`as merely “functional limitations” ........................................... 37
`TRW failed to proper evidentiary support for its Grounds. ................ 39
`1.
`
`TRW ignores the requirement for the Petition to
`provide claim construction and improperly relies on
`
`TRW’s fails to construe the terms “operable at a
`plurality of exposure periods” of claim 1 and
`“operable at a first exposure period and a second
`
`TRW’s misrepresents that claim terms can be ignored
`
`The Petition fails to provide sufficient evidence that
`Vellacott discloses a vision system wherein at least
`two of “said module includes a heat sink” or “said
`
`ii
`
`B.
`C.
`
`D.
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`

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`IPR2015-00437 for U.S. Patent No. 8,599,001
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`module includes a connector for electrically
`connecting to a power source of the equipped vehicle”
`and “said module includes at least a portion of said
`
`TRW failed to cure the deficiencies of Vellacott with
`
`The Petition fails to provide sufficient evidence that
`Vellacott and Kenue disclose that the imager has a
`field of view “wherein said horizontal span is greater
`
`TRW failed to explain how Vellacott teaches a
`photosensor array operable at a plurality of exposure
`periods or first and second exposure periods of claims
`
`TRW failed to explain how the applied art teaches the
`
`TRW failed to show that Venturello teaches
`“determin[ing] [a] presence of at least one of fog,
`
`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
`
`logic and control circuitry” ...................................................... 39
`2.
`the alleged AAPA. ................................................................... 42
`the Miller Declaration. ........................................................................ 44
`1.
`than said vertical span” of claim 73 ......................................... 45
`2.
`24 and 75 .................................................................................. 47
`3.
`features of claim 68 .................................................................. 50
`4.
`snow and rain” as recited in claims 64 and 65 ......................... 53
`Conclusion .................................................................................................... 57
`
`E.
`
`V.
`
`iii
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`

`

`Cases
`
`IPR2015-00437 for U.S. Patent No. 8,599,001
`
`TABLE OF AUTHORITIES
`
`Application of Gazda,
`219 F.2d 449 (C.C.P.A. 1955) ....................................................................... 22
`
`Application of Japiske,
`181 F.2d 1019 (C.C.P.A. 1950) ............................................................... 23, 24
`
`Application of Ruff,
`256 F.2d 590 (C.C.P.A. 1958) ................................................................. 43, 44
`
`Boston Scientific v. Cordis,
`554 F.3d 982 (Fed. Cir. 2009) ....................................................................... 10
`
`Cisco Systems, Inc. v. C-Cation Techs., LLC,
`IPR2014-00454 .......................................................................................... 3, 13
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ..................................................................... 25
`
`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 Nat’l Info. Services, Inc. v. DataTreasury Corp.,
`IPR2014-00489 .............................................................................................. 13
`
`Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
`618 F.3d 1294 (Fed. Cir. 2010) ..................................................................... 18
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ........................................................................................... 16
`
`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) ........................................................... 18, 24, 25
`
`iv
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`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ....................................................................... 17
`
`In re Ochiai,
`71 F.3d 1565 (Fed. Cir. 1995) ................................................................. 20, 21
`
`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)........................................................................... 16, 17, 25
`
`Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC,
`IPR2014-00547 .............................................................................................. 15
`
`Microsoft Corp. v. ProxyConn, Inc.,
`IPR2012-00026 .............................................................................................. 34
`
`TRW Auto. U.S. LLC v. Magna Elec. Inc.,
`IPR2014-00263 .............................................................................................. 16
`
`Statutes
`Rules
`
`35 U.S.C. § 311(b) ................................................................................................. 11
`
`37 C.F.R. § 42.104 ..................................................................................................... 2
`
`37 C.F.R. § 42.104(b) .............................................................................................. 34
`
`37 C.F.R. § 42.22(a)(2) ........................................................................................ 3, 13
`
`37 C.F.R. § 42.6(a)(3) .......................................................................................... 3, 13
`
`Other Authorities
`
`M.P.E.P. § 2144 ....................................................................................................... 20
`
`
`
`
`
`
`v
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`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
`
`EXHIBIT LIST
`
`Description
`Definition of “integrated,” Merriam-Webster Online Dictionary,
`accessed at http://www.merriam-webster.com/dictionary/integrated
`
`
`Exhibit No.
`2001
`
`vi
`
`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
`
`I.
`
`Introduction
`
`The Board should deny TRW’s Petition (“Pet.”) because TRW failed to
`
`provide a threshold showing there is a reasonable likelihood of prevailing in its
`
`challenge against claim 24 and 56 of U.S. Patent 8,599,001 (“’001 patent”).
`
`Though the Grounds asserted against many other claims are in their own respect
`
`deficient, all other challenged claims, claims 57-69, 71, and 73-78, depend from
`
`claim 56. Thus, the deficiencies of the Ground asserted against claims 24 and 56
`
`fatally infect the Petition as a whole.
`
`TRW’s obviousness challenge against claims 24 and 56 lacks sufficient
`
`showing a person of ordinary skill in the art at the time of the invention (“POSA”)
`
`would have found it obvious to combine the references, and even if combinable,
`
`that the references would render claims 24 and 56 obvious. Though TRW proffers
`
`four alleged rationales for combining Vellacott and Kenue, all fail to provide
`
`articulated reasoning with rational underpinning as to why a POSA would have
`
`made the modifications proposed. Specifically, TRW contends that it would have
`
`been obvious to a POSA to re-orient Vellacott’s rearward-facing sensor in a
`
`rearview mirror to be forward-facing – despite the fact that the sensor’s explicit
`
`purpose is to recognize light from headlamps in the rearward field of view and
`
`automatically dim the rearview mirror. Such a modification to Vellacott’s system
`
`would destroy its intended purpose. And TRW’s blanket reliance on unrelated case
`
`1
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`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
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`law alleging it renders the claims per se obvious, without further explanation, is
`
`misplaced.
`
`TRW also failed to bridge the gap between its proffered evidentiary support,
`
`the Grounds challenging the claims, and the language of the claims themselves.
`
`TRW failed to sufficiently address several features of the challenged claims, such
`
`as a module that “includes a heat sink” or “a connector for electrically connecting
`
`to a power source of the equipped vehicle.” Instead, TRW simply announces that
`
`key elements of the claims are present in the references, or that it would have been
`
`obvious to combine the references, without providing the required analysis or
`
`explanation. TRW was required to provide a threshold showing of relevant
`
`evidence. But TRW shirked its burden and left Magna and the Board to fill these
`
`gaps for themselves. “A brief must make all arguments accessible to the judges,
`
`rather than ask them to play archaeologist with the record.”1
`
`TRW’s evidentiary failures are compounded by the Petition’s utter lack of
`
`claim construction and illicit attempt to incorporate reference information or
`
`arguments from the Declaration into the Petition. The Petition ignores the
`
`requirement to construe the claims and explain how the construed claims are
`
`unpatentable under 37 C.F.R. § 42.104. In addition, the Petition circumvents the
`
`
`1 DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999).
`
`2
`
`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
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`PTO’s page limits by citing to the Declaration for explanation, evidence, and
`
`analysis required to present in the Petition under 37 C.F.R. §§ 42.22(a)(2) and
`
`42.6(a)(3). Such flagrant disregard for the rules warrants denial of the Petition. 2
`
`Nonetheless, the evidentiary gaps and statutory deficiencies of the Petition
`
`cannot be cured by the conclusory Declaration of Jeffery A. Miller. The declarant
`
`repeatedly fails to substantiate the contentions of the Petition or inappropriately
`
`relies on alleged teachings of unavailable evidence. Given this lack of evidentiary
`
`foundation, the Declaration does not deserve any weight.
`
`
`2 Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (Paper 12,
`
`Aug. 29, 2014) (informative). As explained in Cisco, citations to “large portions of
`
`another document, without sufficient explanation of those portions, amounts to
`
`incorporation by reference.” Id. at 8. Similarly, Cisco explains that the “practice of
`
`citing [a] Declaration to support conclusory statements that are not otherwise
`
`supported in the Petition also amounts to incorporation by reference.” Id. at 9.
`
`Such incorporation by reference is improper: “[a]rguments must not be
`
`incorporated by reference from one document into another document.” 37 C.F.R. §
`
`42.6(a)(3). Incorporation by reference “amounts to a self-help increase in the
`
`length of the [] brief.” DeSilva, 181 F.3d at 866.
`
`3
`
`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
`
`II. The ’001 patent
`A.
`Summary of the ’001 patent.
`The ’001 patent is directed to a vehicular imaging system that automatically
`
`controls vehicle functions, e.g., headlight control, in response to a detection of
`
`environmental conditions, such as rain or fog, or identification of objects, such as
`
`taillights and oncoming headlights. (Ex. 1102, 31:60-33:67, 37:4-8.)3
`
`The ’001 patent discloses a specialized logic and control circuit resulting in
`
`a vehicular system that was and is able to effectively differentiate headlights and
`
`taillights in front of a vehicle from the background signal. (Id. at 31:60-37:17.) The
`
`patented system may be integrated into vehicle systems to control systems that
`
`operate, e.g., vehicle lighting, windshield wipers, a defogger system, and a
`
`collision avoidance system. (Id. at 36:44-37:3.) The photosensor array of the
`
`patented system uses a plurality of exposure periods when capturing image data for
`
`processing by the image processor. (Id. at 16:62-67.)
`
`B.
`TRW errs in reducing the differences between the forward-facing
`and rear-facing embodiments of the ’001 patent purely to the methods
`of operation
`
`FIGs. 6 and 6A of the ’001 patent show example embodiments for a
`
`rearward-facing sensor. FIG. 6B shows an example embodiment for a forward-
`
`3 Note: Magna cites to the document columns, pages, or lines, while TRW
`
`cites to Bates numbers.
`
`4
`
`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
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`facing sensor.4 The figures illustrate structural differences between the
`
`embodiments. For example, logic circuit 46, digital-to-analog converter 52, or
`
`logic and control circuit 34 have different input/outputs in the embodiments. And
`
`contrary to TRW’s assertion, control circuit 34 has different input/outputs in the
`
`embodiments. The differences between the embodiments, therefore, are not
`
`“purely functional,” as alleged. This is because two control circuits that have
`
`different input/outputs, and, thus are different circuits at least in this regard.
`
`TRW asserts there are no “structural differences” between the forward- and
`
`rear-facing embodiments. (Pet. at 13.) To the contrary, the ’001 patent teaches:
`
`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
`
`
`4 For example, TRW states that “the ‘001 Patent does not show any
`
`structural difference between the forward and backward embodiments … the
`
`specification of the ‘001 Patent expressly admits that the photosensor array 32 and
`
`the logic and control circuit 34 are the same as that for the rearward facing
`
`embodiment.” (Pet. at 13 (emphasis in original).) TRW, however, ignores
`
`differences in FIGs. 6, 6A, and 6B.
`
`5
`
`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
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`interior monitoring system described herein. Ex. 1102, 33:7-12
`(emphasis added).
`By stating that a forward facing camera embodiment may be “integrated
`
`with” the automatic rearview mirror, 5 the ’001 patent is not stating that
`
`“photosensor array 32 and the logic and control circuit 34 are the same as that for
`
`the rearward facing embodiment,” as alleged by the Petition. (Pet. at 13 (emphasis
`
`added).)
`
`TRW contends that “[t]he ‘001 Patent thus admits that its method of
`
`operating the forward-facing image sensor (a known device) is at least ‘generally
`
`the same’ as its method for operating the rearward-facing image sensor.” (Id.)
`
`5 “Integrated” is dictionary-defined to mean “having different parts working
`
`together as a unit.” (Ex. 2001.) The ’001 patent’s teaching that the vehicle lighting
`
`control system of FIG. 6B may be integrated with an automatic rearview mirror
`
`system teaches separate parts working together as a unit - and thus teaches that the
`
`separateness of the vehicle lighting control system of FIG. 6B is maintained and
`
`preserved in such an integration. TRW errs in suggesting interchangeability of the
`
`forward facing vehicle lighting control system of FIG. 6B with any other part or
`
`system, such as a rearward facing electrochromic mirror control or an interior
`
`cabin monitoring system that also may be accommodated in an interior rearview
`
`mirror assembly.
`
`6
`
`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
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`TRW reasons that “[t]he method for processing the forward field of view image is
`
`the same as that shown through step S140 in the flow chart of FIG. 7A, and is
`
`generally the same as to steps S150 and S160 as detailed in the flow chart FIG. 8A,
`
`except that steps S155, S156 and S162 are excluded.” Id. (citing Ex. 1102, 33:67-
`
`34:5)(emphasis in original).
`
`But the section of the ’001 patent relied on by TRW merely points to some
`
`similarities that may exist between the method of operating the forward facing
`
`camera and the rear facing camera. TRW ignores that the ’001 patent presents
`
`different methods of operation and different functions for the rearward facing and
`
`forward facing sensors. For example, the ’001 patent presents flowcharts of FIGs.
`
`13A, 13B, 13C, and 13D as example embodiments for methods of operation of a
`
`forward facing sensor, which are not the same as the methods in other flowcharts,
`
`such as flowcharts of FIGs. 7-9, showing methods of operation of a rear facing
`
`sensor.
`
`TRW erroneously asserts that a forward facing camera operable for
`
`automatic headlamp control is similar or identical to a rear facing camera system
`
`for dimming an electro-chromic mirror. Plainly, such is not so. For example, a
`
`rearward facing camera system such as in Vellacott for electro-chromic mirror
`
`control never is required to distinguish headlights from taillights. Also, for
`
`example, the ’001 patent extensively describes a vehicle interior monitoring system
`
`7
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`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
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`utilizing a rear facing photosensor array for detection and determination of seat
`
`occupancy and the like. (Ex. 1102, 41:12-45:18.)
`
`TRW’s erroneous contentions regarding the forward facing and rearward
`
`facing embodiments of the ’001 patent fly in the face of what those embodiments
`
`actually do. For TRW to contend that the ’001 patent presents nearly identical
`
`structures and methods of operation for its rearward facing and forward facing
`
`sensors is untenable.
`
`III. TRW’s Petition and Miller’s Declaration contain irreparable factual
`and legal flaws
`
`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
`
`for the Petition to stand on its own, TRW makes unsupported or unexplained
`
`conclusions in the Petition and improperly incorporates by reference the
`
`Declaration to fill the gaps, but the Declaration fails to fill those evidentiary gaps.
`
`Dr. Miller’s Declaration is fatally flawed. The Declaration frequently
`
`misrepresents teachings of the asserted references. It makes arbitrary and, at times,
`
`contradictory assertions to reach any conclusion necessary to allege that the
`
`references teach features of the ’001 patent claims.
`
`8
`
`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
`
`A. TRW’s Petition misrepresents that the ’001 patent specification admits
`using Vellacott’s system.
`
`TRW asserts that the ’001 patent claims a vehicular vision system disclosed
`
`by Vellacott. (Pet. at 9-10.) TRW’s assertion appears to be based on the ’001
`
`patent stating“[a]n example of such a photosensor array 32 is the VLSI Vision
`
`Limited (VVL) Single Chip Video Camera Model #ASIS 1011.” (Ex. 1102, 13:30-
`
`37 (emphasis added).) TRW attempts to twist this into an admission by the patent
`
`owner that the claimed invention is the same as the CMOS camera disclosed by
`
`Vellacott. For example, TRW states that “the text of the ‘001 Patent expressly
`
`admits that the claimed CMOS camera array (photosensor array 32 or light sensing
`
`and logic circuit 26) is the very imputer described by Vellacott.” (Pet. at 10.)
`
`TRW’s assertion is unfounded, and is mere speculation lacking evidentiary
`
`support.
`
`The ’001 patent does not discuss Vellacott and Vellacott does not mention
`
`#ASIS 1011. Thus, there is no explicit connection between the disclosures and
`
`certainly no applicant admission with respect to Vellacott.
`
`TRW attempts to circumvent the required presentation of proper evidence.
`
`The Miller Declaration attempts to draw a connection between the example
`
`photosensor mentioned in the ’001 patent and Vellacott by pointing to two
`
`references that are not part of the Grounds. But the Declaration simply presumes a
`
`connection to Vellacott without substantiating an actual link.
`
`9
`
`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
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`Moreover, the purported connection is not germane to the question of
`
`obviousness as grounds challenging a patent in an IPR may only rely on printed
`
`publications and patents. If TRW wanted to rely on any teachings outside of the
`
`asserted references, it should have incorporated documentary evidence of such
`
`teachings in the Grounds and provided analysis as to how and why a POSA would
`
`have combined such teachings with Vellacott. TRW failed to do so.
`
`In addition, TRW failed to recognize that, while Vellacott may be relied
`
`upon for all that it teaches, that does not permit TRW to rely upon various
`
`embodiments as if they were a single system without more.6 TRW contends that
`
`ASIS stands for “Application-Specific Interconnect Structure,” implying that each
`
`model was developed for a specific application. So even if one of the embodiments
`
`of Vellacott were describing ASIS #1011 (and Vellacott does not so describe),
`
`TRW has failed to proffer any connection to the specific electro-chromic mirror
`
`application of Vellacott that is relied upon by TRW in the Grounds.
`
`TRW critically mistakes an example component that may be used in
`
`implementing the claimed invention for the claimed invention itself. Conventional
`
`
`6 Boston Scientific v. Cordis, 554 F.3d 982 (Fed. Cir. 2009) (holding that a
`
`close nexus between embodiments in a reference is a requirement to demonstrate
`
`obviousness to combine them).
`
`10
`
`

`

`IPR2015-00437 for U.S. Patent No. 8,599,001
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`understanding of patent disclosures is that the claimed invention requires more
`
`than any single exemplary component. But TRW does not evaluate any
`
`modifications to a known component that may constitute invention. Instead, TRW
`
`presumes that the patented invention consists of pointing VVL’s ASIS #1011 in a
`
`particular direction. TRW’s characterization is simply unfounded.
`
`B.
`
`The Miller Declaration fails to cure the misrepresentations of the
`Petition
`
`Miller’s explanation regarding this alleged connection between the ’001
`
`patent invention and Vellacott is also inapt. Grounds for inter partes review may
`
`only be based on “prior art consisting of patents or printed publications.”7 To the
`
`extent that TRW relies on an actual device (e.g., ASIS #1011)8, such a Ground is
`
`not proper for inter partes review. Accordingly, even if TRW could show that
`
`Vellacott was describing ASIS #1011 (and TRW does not and cannot), TRW is,
`
`nonetheless, limited to the teachings actually disclosed by Vellacott. If TRW
`
`7 35 U.S.C. § 311(b).
`
`8 See Ex. 1111 ¶ 28 (“‘As of last year [1993], the Peach chip[14] (ASIS
`
`1011-B) was separately available for under £30.’ Paradiso is thus describing the
`
`same Peach camera with supporting electronics (ASIS 1011) that constitutes the
`
`VVL imputer described by Vellacott.” (citation omitted, emphasis and edit in
`
`original).
`
`11
`
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`IPR2015-00437 for U.S. Patent No. 8,599,001
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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 Grounds along
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`with an appropriate explanation regarding their relevance. Instead of pointing to a
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`proper factual basis for its position, TRW inappropriately relies on alleged
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`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
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`#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 Ex. 1104, p. 112; Ex.
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`1111 ¶ 26. But TRW never explains how the “Peach camera,” alleged to be the
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`VVL ASIS #1011-B, is linked to the actual portion of Vellacott relied upon – i.e.,
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`an implementation in an electro-chromic rearview mirror. In addition, TRW fails to
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`substantiate any contention that the claimed invention is encompassed by the
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`“Peach camera,” VVL ASIS #1011-B, or VVL ASIS #1011. Instead, TRW
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`erroneously treats the various embodiments of Vellacott as a single embodiment
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`and boldly presumes that these are the same as the claimed invention based on the
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`faintest traces of argument.
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`C. TRW’s Petition fails to meet the threshold showing for institution and
`rather improperly incorporates by reference the Declaration.
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`TRW’s Petition states that its discussion stands on its own. (Pet. at 7.) Yet,
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`in an apparent effort to avoid the page limits, the Petition relies on the Declaration
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`IPR2015-00437 for U.S. Patent No. 8,599,001
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`to fill the gaps. Such a tactic is, in essence, the prohibited incorporation by
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`reference of the Declaration. 9 37 C.F.R. §§ 42.22(a)(2) and 42.6(a)(3).
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`In IPR2014-0048910, 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
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`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
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`to circumvent the page limits that apply to petitions.”11
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`Here, the Petition failed to provide any claim construction of any term in
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`violation of 37 C.F.R. § 42.104. Instead, it appears TRW placed the claim
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`construction in the Declaration in order to meet this fundamental requirement
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`without effecting their page limits. See, e.g., Ex. 1111 ¶¶ 16, 17, 210. Were TRW
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`intended to rely on such constructions, it should have properly included such
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`constructions in the Petition.
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`9 See 37 C.F.R. §§ 42.22(a)(2) and 42.6(a)(3).
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`10 See Fidelity Nat’l Info. Services, Inc. v. DataTreasury Corp., IPR2014-
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`00489, p. 9 (Paper 9, Aug. 13, 2014); Cisco at 9 (informative) (finding that the
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`“practice of citing [a] Declaration to support conclusory statements that are not
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`otherwise supported in the Petition [] amounts to incorporation by reference.”).
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`11 Cisco at 9.
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`IPR2015-00437 for U.S. Patent No. 8,599,001
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`In another example, the Petition points to Vellacott for the heat sink of claim
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`56 without the slightest hint of documentary evidence or obviousness analysis.
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`Instead, the Petition refers the reader to the Declaration. (Pet. at 29.) The cited
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`portion of the Declaration, however, speaks of a desire and practice to dissipate
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`heat and that one “common and well known” solution was to use a heat sink. (Ex.
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`1111 ¶ 213.) Miller contends that the “modification” of “the mere addition of a
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`heat sink” would require “no creative step.” (Id. at 214.) Thus, the Petition lacks
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`any evidence of this feature of independent claim 56 and relies solely on the
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`Declaration to cure this deficiency. In yet another example, the Petition cites to
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`Vellacott for a teaching of a “logic and control circuitry.” (Pet. at 38.) But the cited
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`portion of Vellacott pertains to a fingerprint system, not Vellacott’s electro-
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`chromic rearview mirror embodiment relied upon by TRW for various other
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`features of claims 1 and 56. Then the Declaration further adds to the confusion, or
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`attempts to correct the mistakes of the Petition, and cites different portions of
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`Vellacott relating to an imputer. (Ex. 1111 ¶¶ 209-10.) In addition, the Declaration
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`makes conclusory statements that such a feature is “obvious” and required as “a
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`well-known fundamental principle.” (Id.) Thus, the Declaration does not support
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`the contentions of the Petition. Instead, the Declaration tries to correct or
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`supplement the Grounds through alternative evidence and argument.
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`IPR2015-00437 for U.S. Patent No. 8,599,001
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`Such use of the Declaration amounts to improper incorporation by reference.
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`Thus, these Grounds violate the requirement that the specific grounds and evidence
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`be provided in the petition.
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`D. Miller makes many fatal mistakes in his Declaration.
`Miller’s Declaration is not entitled to weight. Miller contradicts himself
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`throughout the Declaration and frequently draws obviousness conclusions from his
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`own perspective, i.e., using “I” multiple times, rather than from the perspective of
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