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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 IPR2015-00438
`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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`IPR2015-00438 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
`
`Introduction ..................................................................................................... 1
`The ’001 patent ............................................................................................... 3
`A.
`Summary of the ’001 patent. ................................................................. 3
`B.
`purely to the methods of operation. ....................................................... 4
`III. TRW’s Petition and Miller’s Declaration contain irreparable factual and
`legal flaws ....................................................................................................... 7
`A.
`as admiting use of Vellacott’s imputer. ................................................. 8
`B.
`of the Petition ...................................................................................... 10
`C.
`the Declaration. ................................................................................... 12
`D. Miller makes many fatal mistakes in his Declaration. ........................ 13
`IV. TRW’s Petition failed to meet the minimum threshold showing that TRW is
`likely to prevail on the asserted Grounds ..................................................... 14
`A.
`in proposing a combination of Vellacott and Kenue ........................... 15
`1.
`TRW’s core asserted references ............................................... 16
`(a) Vellacott ......................................................................... 16
`(b) Kenue ............................................................................. 18
`2.
`combination of Vellacott and Kenue. ...................................... 18
`(a) Gazda ............................................................................. 20
`
`TRW’s Petition misrepresents the ’001 patent specification
`
`The Miller Declaration fails to cure the misrepresentations
`
`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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`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
`
`motivation to combine since it routinely turns to
`documents not found in the Grounds to support its
`
`The Declaration fails to support the proposed
`
`TRW failed to show that a POSA would have combined
`
`Venturello does not suggest detection of the presence
`
`Japikse ........................................................................... 21
`(b)
`(c) Applying a known technique to a known device .......... 22
`(d) Use of a known technique to improve similar
`devices ........................................................................... 26
`3. Miller does not cure the deficiencies regarding lack of
`allegations. ............................................................................... 28
`4.
`combination of Vellacott and Kenue. ...................................... 29
`Vellacott with Venturello .................................................................... 30
`1.
`of fog as alleged ....................................................................... 31
`2.
`Kenue, and Schofield as proposed ........................................... 34
`(a)
`would have been predictable ......................................... 34
`(b)
`lacks a rational underpinning ......................................... 36
`92, 93, and 95 ...................................................................................... 37
`claims before applying the asserted references ................................... 38
`1.
`Miller’s Declaration ................................................................. 39
`
`The Petition fails to articulate an appropriate
`explanation as to how and why a POSA would
`combine Venturello’s system with that of Vellacott,
`
`The Petition lacks a credible way of combining
`Venturello’s teachings such that the results
`
`The proposed combination with Venturello
`
`The Petition lacks adequate explanation and evidentiary
`support for the Grounds challenging claims 83-85, 88, 89,
`
`TRW failed to fully and properly consider the scope of the
`
`TRW ignores the requirement for the Petition to
`provide claim construction and improperly relies on
`
`ii
`
`B.
`
`C.
`D.
`
`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
`
`TRW’s fails to construe the term “operable at a first
`exposure period and a second exposure period” of
`
`TRW’s misrepresents that claim terms can be ignored
`
`TRW failed to provide proper evidentiary support for its
`
`The Petition fails to provide sufficient evidence that
`Vellacott discloses an “imager [that] is disposed at an
`
`TRW failed to show Vellacott teaches a vision system
`
`TRW failed to cure the deficiencies of Vellacott with
`
`E.
`
`F.
`
`2.
`claim 90 .................................................................................... 39
`3.
`as merely “functional limitations” ........................................... 42
`Grounds. .............................................................................................. 43
`1.
`interior portion of a vehicle” .................................................... 44
`2.
`to “detect an object” as recited in claim 79 ............................. 44
`3.
`the alleged AAPA. ................................................................... 45
`the Miller Declaration. ........................................................................ 47
`1.
`and rain” as recited in claims 79 and 84 .................................. 47
`2.
`than said vertical span” of claim 88 ......................................... 51
`3.
`claim 90 .................................................................................... 53
`4.
`of the limitations of claim 86 ................................................... 56
`Conclusion .................................................................................................... 58
`
`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 failed to show that Venturello teaches
`“determin[ing] a presence of at least one of fog, snow
`
`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 [that] is operable at a first
`exposure period and a second exposure period” of
`
`TRW failed to explain how the applied art teaches any
`
`iii
`
`V.
`
`

`

`Cases
`
`IPR2015-00438 for U.S. Patent No. 8,599,001
`
`TABLE OF AUTHORITIES
`
`Application of Gazda,
`219 F.2d 449 (C.C.P.A. 1955) ................................................................. 20, 21
`
`Application of Japikse,
`181 F.2d 1019 (C.C.P.A. 1950) ............................................................... 21, 22
`
`Application of Ruff,
`256 F.2d 590 (C.C.P.A. 1958) ................................................................. 46, 47
`
`Boston Scientific v. Cordis,
`554 F.3d 982 (Fed. Cir. 2009) ......................................................................... 9
`
`Cisco Systems, Inc. v. C-Cation Techs., LLC,
`IPR2014-00454 .......................................................................................... 3, 12
`
`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) ........................................................................... 3
`
`Ex parte Papst-Motoren,
`1 U.S.P.Q.2d 1655 (B.P.A.I. 1986) ............................................................... 40
`
`Fidelity Nat’l Info. Services, Inc. v. DataTreasury Corp.,
` IPR2014-00489 (Paper 9, Aug. 13, 2014) .................................................... 12
`
`Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
`618 F.3d 1294 (Fed. Cir. 2010) ..................................................................... 16
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ........................................................................................... 14
`
`Hewlett-Packard Co. v. Bausch & Lomb, Inc.,
`909 F.2d 1464 (Fed. Cir. 1990) ..................................................................... 42
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ................................................................. 16, 23
`
`iv
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`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ....................................................................... 15
`
`In re Ochiai,
`71 F.3d 1565 (Fed. Cir. 1995) ................................................................. 18, 20
`
`In re Stencel,
`828 F.2d 751 (Fed. Cir. 1987) ....................................................................... 42
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ..................................................................... 42
`
`KSR International Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)........................................................................... 15, 16, 23
`
`Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC,
`IPR2014-00547 (Paper 17, Dec. 3, 2014) ..................................................... 14
`
`Microsoft Corp. v. ProxyConn, Inc.,
`IPR2012-00026 (Paper 17, Dec. 21, 2012) ................................................... 38
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041 (Paper 16, Feb. 22, 2013) .................................................... 37
`
`TRW Auto. U.S. LLC v. Magna Elec. Inc.,
`IPR2014-00263 (Paper 15, Jun. 25, 2014) .................................................... 15
`
`35 U.S.C. § 311(b) ................................................................................................... 10
`
`Statutes
`Rules
`
`37 C.F.R. § 42.104(b) .............................................................................................. 39
`
`37 C.F.R. § 42.22(a)(2) ....................................................................................... 3, 12
`
`37 C.F.R. § 42.6(a)(3) ......................................................................................... 3, 12
`
`Other Authorities
`
`M.P.E.P. § 2144 ....................................................................................................... 18
`
`
`
`v
`
`

`

`IPR2015-00438 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
`
`

`

`IPR2015-00438 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 79 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 80-95, depend from claim 79. Thus, the
`
`deficiencies of the Ground asserted against claim 79 fatally infect the Petition as a
`
`whole.
`
`TRW’s obviousness challenge against claim 79 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 claim 79 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 inapplicable case law
`
`1
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`

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`IPR2015-00438 for U.S. Patent No. 8,599,001
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`alleging it renders the claims per se obvious, without further explanation, is
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`misplaced.
`
`Further, TRW failed to support its contention that Venturello teaches or
`
`suggests a vehicular vision system that determines the presence of fog. And even if
`
`Venturello had suggested such a system, TRW failed to support the contention that
`
`Venturello’s algorithm could be utilized in Vellacott’s system without structural
`
`change to Vellacott’s system to control a vehicle’s headlamps. Venturello’s system
`
`provides an image of objects in fog with an improved signal to noise ratio by
`
`shuttering out signals with a lower signal to noise ratio. But Venturello does not
`
`determine the presence of fog. Moreover, Venturello’s system requires a shutter
`
`and image intensifier lacking in Vellacott’s system and is silent to control over a
`
`vehicle’s headlamps.
`
`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 an imager “disposed at an interior portion of a 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
`
`2
`
`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
`
`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
`
`Finally, the Petition circumvents the 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 are not cured by the conclusory Miller
`
`Declaration. The declarant repeatedly fails to substantiate the Petition’s
`
`contentions or inappropriately relies on alleged teachings of unavailable evidence.
`
`Given this lack of evidentiary foundation, the Declaration deserves no weight.
`
`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
`
`
`1 DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999).
`
`2 Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (Paper 12,
`
`Aug. 29, 2014) (informative). Incorporation by reference “amounts to a self-help
`
`increase in the length of the [] brief.” DeSilva,181 F.3d at 866.
`
`3
`
`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
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`taillights and oncoming headlights. Ex. 1202, 31:60-33:67, 37:4-8. 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.
`
`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-
`
`facing sensor.3 The embodiments show structural differences. 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,
`
`3 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. 13
`
`(emphasis in original). TRW, however, ignores the differences in FIGs. 6, 6A, and
`
`6B.
`
`4
`
`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
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`control circuit 34 has different input/outputs in the embodiments. The
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`embodiments, therefore, are not “purely functional” as alleged. This is because two
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`control circuits that have different input/outputs and, thus, are different circuits in
`
`at least 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
`interior monitoring system described herein.” Ex. 1202 at 33:7-12
`(emphasis added).
`
`By stating that a forward facing camera embodiment may be “integrated with” the
`
`automatic rearview mirror,4 the ’001 patent is not stating that “photosensor array
`
`
`4 “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
`
`5
`
`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
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`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. 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. 1202, 33:67-
`
`34:5)(emphasis in original omitted).
`
`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,
`
`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
`
`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
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`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, as claimed. Also,
`
`for example, the ’001 patent extensively describes a vehicle interior monitoring
`
`system utilizing a rear facing photosensor array for detection and determination of
`
`seat occupancy and the like. Ex. 1202, 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
`
`7
`
`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
`
`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.
`
`A. TRW’s Petition misrepresents the ’001 patent specification as
`admiting use of Vellacott’s imputer.
`
`TRW asserts that the ’001 patent claims a vehicular vision system disclosed
`
`by Vellacott. Pet. at 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. 1202, 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.” Id. 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.
`
`8
`
`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
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`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. 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, it does not permit TRW to rely upon various
`
`embodiments as if they were a single system without more.5 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),
`
`5 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).
`
`9
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`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
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`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
`
`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.”6 To the
`
`extent that TRW relies on an actual device (e.g., ASIS #1011)7, such a Ground is
`
`
`6 35 U.S.C. § 311(b).
`
`7 See Ex. 1211 ¶ 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
`
`10
`
`

`

`IPR2015-00438 for U.S. Patent No. 8,599,001
`
`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
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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. 1204, 112; Ex.
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`1211 ¶ 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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`VVL imputer described by Vellacott.” (citation omitted, emphasis and edit in
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`original).
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`11
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`IPR2015-00438 for U.S. Patent No. 8,599,001
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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, in
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`an apparent effort to avoid the page limits, the Petition relies on the Declaration to
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`fill the gaps. Such a tactic is, in essence, the prohibited incorporation by reference
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`of the Declaration.8
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`In IPR2014-004899, 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.”10
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`8 See 37 C.F.R. §§ 42.22(a)(2) and 42.6(a)(3).
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`9 See Fidelity Nat’l Info. Services, Inc. v. DataTreasury Corp., IPR2014-
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`00489, 9 (Paper 9, Aug. 13, 2014); Cisco at 9 (finding that the “practice of citing
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`[a] Declaration to support conclusory statements that are not otherwise supported
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`in the Petition [] amounts to incorporation by reference.”).
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`10 Cisco at 9.
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`12
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`IPR2015-00438 for U.S. Patent No. 8,599,001
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`In this case, the Petition conclusorily states claims 83-85, 88, 89, 92, 93, and
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`95 are obvious without presenting obviousness analysis and, instead, refers the
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`reader to the Declaration. Pet. at 32-38, 40, 41, and 51. The Declaration, however,
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`relies on new references not used in the Petition. For example, to allegedly show
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`“said imager views through … a windshield area that is swept by a windshield
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`wiper,” as recited in claim 85, the Petition conclusorily states “rearview mirrors
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`were well-known … to be located on the windshield in an area that is swept by the
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`windshield wipers.” Id. at 35. And the Declaration brings in two new references to
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`fill the gap. Ex. 1211 at ¶¶ 123, 156-57.
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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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`a POSA. These mistakes undermine his contention that the challenged claims are
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`obvious to a POSA.
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`In one example,
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`13
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`IPR2015-00438 for U.S. Patent No. 8,599,001
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`Miller’s Declaration repeatedly draws alleged obviousness conclusions from
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`the perspective of the expert himself rather than a POSA. Such legally incorrect
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`conclusions in the Declaration appear for example in ¶ 62 (“I find no difference
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`…”) and ¶ 65 (“I find that …”).11 Not only are findings from an improper
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`perspective, they are unsubstantiated by objective evidence. Given these fatal
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`flaws, Miller’s conclusory findings and opinions should not be given any weight.
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`IV. TRW’s Petition failed to meet the minimum threshold showing that
`TRW is likely to prevail on the asserted Grounds
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`TRW has also failed to meet the minimum threshold showing that it is likely
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`to prevail in proving its Grounds of obviousness at least because TRW failed to
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`provide sufficient obviousness rationales. TRW has strayed from the bedrock
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`principles of obviousness set forth in Graham v. John Deere Co.12 and reaffirmed
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`11 Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-
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`0054