Tria1s@uspto. gov
`571-272-7822
`
`Paper No. __
`
`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 IPR2015-00
`
`Patent 8,599,001
`
`PETITION FOR INTER PARTES REVIEW
`
`Respectfully submitted,
`
`LATHROP & GAGE LLP
`
`\ X3-’§§2'
`
`A. Justin Poplin, Reg. No. 53,476
`Timothy K. Sendek, Reg. No. 64,542
`
`Allan J. Stemstein, Reg. No. 27,396
`
`

`

`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`
`Introduction and Exhibits ............................................................................. 1
`
`Threshold Issues .......................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`Challenge/relief request – Rules 42.22(a)(1) & 42.104(b)(1)-(2) ....... 1
`
`Standing – Rule 42.104(a) ................................................................. 2
`
`Real party in interest – Rule 42.8(b)(1) .............................................. 3
`
`D. Other proceedings – Rule 42.8(b)(2) .................................................. 3
`
`E.
`
`F.
`
`G.
`
`H.
`
`Counsel – Rule 42.8(b)(3) .................................................................. 4
`
`Service – Rule 42.8(b)(4) ................................................................... 4
`
`Fees - Rule 42.103 ............................................................................. 4
`
`Certification of service – Rules 42.6(e)(4)(iii) & 42.105(a)................ 4
`
`III. Claim Construction – Rule 42.104(b)........................................................... 5
`
`IV. Statement of reasons for the relief requested showing that there is a
`reasonable likelihood that the Petitioner will prevail – Rules
`42.22(a)(2) & 104(b)(4); 35 U.S.C. 314(a)................................................... 5
`
`A.
`
`Background and Introduction ............................................................. 5
`
`B. Grounds of rejection .......................................................................... 7
`
`1.
`
`Ground 1: Claims 11-14 are obvious ........................................ 7
`
`a.
`
`Background determinations, per KSR ............................. 8
`
`i.
`
`Scope and content of the prior art, and
`differences between prior art and claims .............. 8
`
`ii.
`
`Level of ordinary skill .......................................... 8
`
`b.
`
`Ground 1: Claim 11 is obvious ...................................... 9
`
`i.
`
`ii.
`
`The elements of claim 1 are obvious .................... 9
`
`The elements of claim 11 are obvious ................ 23
`
`Ground 1: Claim 12 is obvious .................................... 27
`
`Ground 1: Claim 13 is obvious .................................... 27
`
`Ground 1: Claim 14 is obvious .................................... 28
`
`c.
`
`d.
`
`e.
`
`
`
`i
`
`

`

`
`
`
`
`2.
`
`Ground 2: Claims 96-97, 100, 102-106, and 107 are
`obvious .................................................................................. 29
`
`a.
`
`Background determinations, per KSR ........................... 29
`
`i.
`
`Scope and content of the prior art, and
`differences between prior art and claims ............ 29
`
`ii.
`
`Level of ordinary skill ........................................ 32
`
`Ground 2: Claim 96 is obvious .................................... 32
`
`Ground 2: Claim 97 is obvious .................................... 37
`
`Ground 2: Claim 100 is obvious................................... 38
`
`Ground 2: Claim 102 is obvious................................... 39
`
`Ground 2: Claim 103 is obvious................................... 40
`
`Ground 2: Claim 104 is obvious................................... 41
`
`Ground 2: Claim 105 is obvious................................... 42
`
`Ground 2: Claim 106 is obvious................................... 43
`
`Ground 2: Claim 109 is obvious................................... 44
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`i.
`
`j.
`
`3.
`
`Ground 3: Claims 98-99 and 101 are obvious ........................ 44
`
`a.
`
`Background determinations, per KSR ........................... 45
`
`i.
`
`Scope and content of the prior art, and
`differences between prior art and claims ............ 45
`
`ii.
`
`Level of ordinary skill ........................................ 48
`
`b.
`
`c.
`
`d.
`
`Ground 3: Claim 98 is obvious .................................... 48
`
`Ground 3: Claim 99 is obvious .................................... 49
`
`Ground 3: Claim 101 is obvious................................... 50
`
`4.
`
`Ground 4: Claims 107-108 are obvious .................................. 51
`
`a.
`
`Background determinations, per KSR ........................... 51
`
`i.
`
`Scope and content of the prior art, and
`differences between prior art and claims ............ 51
`
`ii.
`
`Level of ordinary skill ........................................ 54
`
`Ground 4: Claim 107 is obvious................................... 54
`
`Ground 4: Claim 108 is obvious................................... 55
`
`b.
`
`c.
`
`ii
`
`

`

`
`
`V.
`V.
`
`Conclusion ................................................................................................. 55
`Conclusion ............................................................................................... ..55
`
`
`
`iii
`iii
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`

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`
`
`I.
`
`Introduction and Exhibits
`
`
`
`Petitioner seeks inter partes review to invalidate certain claims of U.S. Pat.
`
`No. 8,599,001 titled “VEHICULAR VISION SYSTEM,” which issued Dec. 3,
`
`2013 and has not yet expired. A copy of the ‘001 Patent is attached as Ex. 1302.1
`
`The technology at issue pertains to a CMOS photosensor array positioned behind a
`
`windshield of an equipped vehicle. (1302-001 at Abstract).2 The ‘001 Patent was
`
`filed Nov. 19, 2012, and claims priority ultimately to U.S. Pat. No. 5,877,897, filed
`
`June 7, 1995.3
`
`II. Threshold Issues
`
`II.A. Challenge/relief request – Rules 42.22(a)(1) and 42.104(b)(1)-(2)
`
`Petitioner requests inter partes review and invalidation of claims 11-14 and
`
`96-109 of the ‘001 Patent. The bases for this request are summarized in the table
`
`below. References to statutes are pre-AIA.
`
`
`
`1 A full listing of all exhibits, per Rule 42.63(e) is provided as Exhibit 1301.
`
`2 The discussion below identifies exhibits by name, together with page
`
`numbers that have been added to expedite review. The citations have as a format
`
`“XXXX-YYY” where XXXX is the exhibit number and YYY is the sequential
`
`page number of that document. Such information as column number, line number,
`
`and paragraph number are further provided as appropriate.
`
`3 This petition assumes that the ‘001 Patent is entitled to the June 7, 1995
`
`priority date, as entitlement to that date is not believed to affect the outcome in this
`
`proceeding. Petitioner does not admit entitlement to June 7, 1995.
`
`1
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`
`
`‘001 Claims
`
`Basis For Rejection
`
`11-14
`
`35 U.S.C. 103(a) as obvious over Vellacott (Ex 1304)4 in
`
`view of Kenue (Ex. 1305)5 and Venturello (Ex. 1307)6
`
`96-97, 100, 102-
`
`35 U.S.C. 103(a) as obvious over Vellacott (Ex 1304) in view
`
`106, 109
`
`of Kenue (Ex. 1305) and Schofield (Ex. 1308)7
`
`98-99, 101
`
`35 U.S.C. 103(a) as obvious over Vellacott (Ex 1304) in view
`
`of Kenue (Ex. 1305), Schofield (Ex 1308), and Venturello
`
`(Ex. 1307)
`
`107-108
`
`35 U.S.C. 103(a) as obvious over Vellacott (Ex 1304) in view
`
`of Kenue (Ex. 1305), Schofield (Ex 1308), and Venturello
`
`(Ex. 1307), and further in view of Denyer (Ex. 1309)8
`
`II.B. Standing – Rule 42.104(a)
`
`Petitioner certifies that the patent for which review is sought is available for
`
`inter partes review, and that Petitioner is not barred or estopped from requesting
`
`
`
`4 Vellacott, Oliver, “CMOS in Camera,” IEE Review, pp. 111-114 (May
`
`1994); prior art under § 102(b).
`
`5 U.S. Pat. No. 4,970,653, issued Nov. 13, 1990; prior art under § 102(b).
`
`6 Eur. Pat. Appl. No. 0 353 200, publ. Jan. 31, 1990; prior art under § 102(b).
`
`7 U.S. Pat. No. 4,930,742, issued June 5, 1990; prior art under § 102(b).
`
`8 PCT Pub. No. WO 93/11631, publ, June 10, 1993; prior art under § 102(b).
`
`2
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`

`
`
`inter partes review challenging the patent claims on the grounds identified herein.
`
`II.C. Real party in interest – Rule 42.8(b)(1)
`
`Petitioner certifies that TRW Automotive U.S. LLC of Farmington Hills,
`
`Michigan is the real party in interest.
`
`II.D. Other proceedings – Rule 42.8(b)(2)
`
`Petitioner is a defendant in an action filed by Magna Electronics Corporation
`
`in the U.S. District Court for the Western District of Michigan. Magna Electronics
`
`Inc. v TRW Automotive Holdings Corp., et al., Case 1:12-cv-00654 (W.D. Mich.
`
`2012). The complaint first alleging infringement of the ‘001 Patent was filed and
`
`served on December 16, 2013, being added by a motion for leave to amend that
`
`was granted (and the patent deemed filed) on December 16, 2013. The
`
`circumstances in this case are substantially similar to previous IPR cases in which
`
`Patent Owner unsuccessfully argued that the filing of a motion for leave, rather
`
`than the granting of that leave, triggers the one year clock of 35 U.S.C. 315(b). See
`
`e.g., IPR2014-00293, Paper 18. There are two other defendants in the case: TRW
`
`Automotive Holdings Corp. and TRW Vehicle Safety Systems Inc. Both entities
`
`are corporations related to Petitioner. The action is for infringement of fourteen
`
`patents, one of which is the ‘001 Patent that is the subject of this Petition. A
`
`decision on this Petition might have an effect on or be affected by the action.
`
`Separate petitions are also being concurrently filed to challenge other claims
`
`of the ‘001 Patent. TRW regrets the need to file multiple petitions for the same
`
`patent. However, the patenting scheme by the Patent Owner, of filing up to a
`
`3
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`
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`hundred claims in each continuation, while asserting hundreds of claims in the
`
`related litigation, have necessitated such an approach.
`
`II.E. Counsel – Rule 42.8(b)(3)
`
`Petitioner designates counsel as follows: lead counsel is A. Justin Poplin
`
`(Reg. No. 53,476); back-up counsel is Timothy K. Sendek (Reg. No. 64,542) and
`
`Allan J. Sternstein (Reg. No. 27,396).
`
`II.F. Service – Rule 42.8(b)(4)
`
`
`
`Papers concerning this matter should be served on the following:
`
`LATHROP & GAGE, LLP
`
`Patent@LathropGage.com
`
`IP Docketing, Inter Partes Review
`
`JPoplin@LathropGage.com
`
`2345 Grand Blvd., Ste. 2400
`
`TSendek@LathropGage.com
`
`Kansas City, Missouri 64108
`
`ASternstein@LathropGage.com
`
`Petitioner’s lead counsel may also be contacted by phone at 913-451-5130.
`
`II.G. Fees - Rule 42.103
`
`
`
`The USPTO is authorized to charge the required fees as well as any
`
`additional fees that might be due to Deposit Account No. 12-0600.
`
`II.H. Certification of service – Rules 42.6(e)(4)(iii) and 42.105(a)
`
`Petitioner certifies that a copy of this Request has been served in its entirety
`
`on the Patent Owner at the address provided for in 37 C.F.R. 42.6(e)(3).
`
`Specifically, this Petition for Inter Partes Review is being served on the
`
`correspondent of record for the ‘001 Patent: Gardner, Linn, Burkhart & Flory,
`
`LLP, 2851 Charlevoix Dr., SE, Suite 207, Grand Rapids MI 49546.
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`4
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`
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`III. Claim Construction – Rule 42.104(b)
`
`Petitioner believes that the claims at issue do not need specific constructions.
`
`IV. Statement of Reasons for the Relief Requested Showing That There Is a
`Reasonable Likelihood That the Petitioner Will Prevail – Rules
`42.22(a)(2) and 104(b)(4); 35 U.S.C. 314(a)
`
`IV.A. Background and Introduction
`
`Petitioner seeks invalidity of claims 11-14 and 96-109 of the ‘001 Patent. At
`
`a summary level, these claims address a vehicular vision system including a
`
`forward-facing CMOS photosensor array. Many of the nearly 100 claims of the
`
`‘001 Patent further include, under various permutations, additional structural
`
`requirements for the size of the photosensor array and attachment of the array
`
`module to the vehicle windshield, as well as functional limitations relating to the
`
`ability of the system to detect headlights or fog, and then send a control signal to
`
`one of several vehicle systems.
`
`The prosecution history (Ex. 1303) of the ‘001 Patent reveals that no
`
`substantive office actions were filed by the examiner during prosecution, and all
`
`originally-filed 109 claims issued with only minor typographical amendments. The
`
`sole statement by the examiner with respect to the patentability of the claims
`
`appears in a Notice of Allowability mailed Sept. 13, 2013. (1303-037 to 1303-
`
`038).
`
`The examiner’s statement did not find that the forward-facing CMOS
`
`photosensor array was itself novel at the time of the invention. Instead, with
`
`respect to independent claims 1 and 96, the examiner determined that these claims
`
`were patentable based on their claimed exposure control features (claim 1) and the
`
`5
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`
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`releasable mounting and the size of the CMOS imaging array (claim 96). The
`
`examiner made no separate findings of patentability for any dependent claims.
`
`(1303-038).
`
`Certain references have come to light that, although appearing among nearly
`
`800 prior art references listed on the ‘001 Patent (1302-001 through 1302-008),
`
`none of these references appear to have been given any substantive consideration
`
`during the prosecution of the ‘001 Patent. For example, Vellacott (1304) discloses
`
`a vehicular vision system with the claimed exposure control features and Schofield
`
`(1308) discloses a releasable mount for use in vehicles as claimed.
`
`Vellacott further discloses that the very CMOS cameras set forth in the ‘001
`
`Patent had been sold to, and were in use by, the original Assignee of the ‘001
`
`Patent (Donnelly Corporation) well before the earliest priority date of the ‘001
`
`Patent. (1304-004 at page 4, col. 3). Moreover, 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 – the CMOS
`
`imager and imputer made by VLSI Vision Limited (“VVL”). (1304-040 at 13:35-
`
`45).
`
`Claim 1 does not add novel features to Vellacott’s imputer. Rather, claim 1
`
`merely describes a method of operating VVL’s own invention in a forward
`
`direction. While Vellacott does not explicitly place its CMOS photosensor array
`
`such that it faces forward to view through a windshield, forward-facing solid-state
`
`windshield cameras were well-known in the art at the time of the invention, as
`
`disclosed by Kenue (Ex. 1305).
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`6
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`
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`The other secondary references included in this Petition (Schofield (Ex.
`
`1308), Venturello (Ex. 1307), and Denyer (Ex. 1309)) are relied upon for teaching
`
`limitations absent from Vellacott. Among other things, these references show a
`
`known mirror mounting method, that automobile vision system processing
`
`algorithms could easily have been programmed into Vellacott’s device without any
`
`interference with or modifications to the hardware of the system, and also that
`
`color CMOS imagers were known at the time of the claimed invention.
`
`IV.B. Grounds of rejection
`
`
`
`The following discussion proceeds element-by-element for each relevant
`
`claim. The format of the discussion presents the exact claim language as headings
`
`in italics. In each instance, the discussion states with particularity where the
`
`element may be found in the references that are applicable to the proposed grounds
`
`of rejection. The discussion also provides good and sufficient reasoning to form the
`
`basis of the obviousness rejection, pursuant to the standards enunciated in KSR v.
`
`Teleflex Inc., 550 U.S. 398 (2007). A Declaration of Dr. Jeffrey A. Miller (Ex.
`
`1311) accompanies this Petition. The discussion stands on its own weight, but also
`
`cites to Dr. Miller’s declaration for supportive facts and reasoning from a
`
`perspective of one of ordinary skill in the art. Dr. Miller is a professor of
`
`Engineering Practices in the Department of Computer Science at the University of
`
`Southern California and is well-qualified to assist the Board in this matter.
`
`IV.B.1. Ground 1: Claims 11-14 are obvious
`
`Claims 11-14 are invalid and unpatentable under 35 U.S.C. 103(a) as being
`
`obvious over Vellacott in view of Kenue, Schofield, and Venturello.
`
`7
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`
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`An obviousness analysis: (1) determines the scope and content of the prior
`
`art; (2) ascertains the differences between the prior art and the claims at issue; and
`
`(3) resolves the level of ordinary skill in the art. KSR, 550 U.S. at 406 (citing
`
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)). The inquiry
`
`is “whether the improvement is more than the predictable use of prior art elements
`
`according to their established functions.” KSR, 550 U.S. at 417.
`
`IV.B.1.a. Background determinations, per KSR
`
`IV.B.1.a.i. Scope and content of the prior art, and differences between prior
`art and claims
`
`The primary reference is Vellacott (Ex. 1304). Vellacott contains all of the
`
`limitations in each claim, except for which direction the image sensor array is
`
`facing and whether the image processor of the image sensor array could be
`
`programmed to detect fog. Yet forward-facing windshield vehicle cameras as
`
`claimed were well-known in the art at the time of the invention; this is clearly
`
`demonstrated by Kenue (Ex. 1305). (See also 1311 at ¶43, ¶54, ¶68, ¶¶71-75, etc.).
`
`And it was well-known in the art to program image processors of vehicular vision
`
`systems with algorithms that detect fog, as clearly demonstrated by Venturello (Ex.
`
`1307). (See also 1311 at ¶¶48-50, ¶¶81-84, and ¶¶140-143).
`
`IV.B.1.a.ii. Level of ordinary skill
`
`In view of at least the types of problems encountered in the art, the prior art
`
`solutions to those problems and, all as addressed herein, it is submitted that the
`
`person of ordinary skill in the art of the ‘001 Patent at the time of the invention
`
`would have had at least the qualifications of or equivalent to either a undergraduate
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`8
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`
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`degree in electrical engineering or mechanical engineering with course work or
`
`research in automobile accessory systems with at least two years of work making
`
`automobile accessory systems. (See also 1311 at
`
`IV.B.1.b. Ground 1: Claim 11 is obvious
`
`Claim 11 depends from 1, so the discussion below proceeds through claim 1
`
`before discussing the invalidity of claim 11.
`
`IV.B.1.b.i. Ground 1: the elements of claim 1 are obvious
`
`1. A vehicular vision system, said vehicular vision system
`comprising:
`
`The claimed vehicular vision system is disclosed by Vellacott, where the
`
`reference features a CMOS VLSI image sensor/imputer for an automotive mirror
`
`imaging system to analyze image data. (1304-004 at third column, second full
`
`paragraph). Vellacott expressly states that its image sensor/imputer “replaces a
`
`camera, frame grabber, processing board and PC/workstation with a single
`
`architecture.” (1304-004 at col. 3, first paragraph). Vellacott further confirms that
`
`its CMOS imaging imputer system was specifically sold to “US automotive
`
`components manufacturer Donnelly Corp.” for use as a vehicular vision system
`
`“housed inside the rear-view mirror.” (1304-004 at col. 3). Donnelly Corporation is
`
`the “Applicant” listed on the face of the ‘001 Patent, and was also the original
`
`assignee of the ‘001 Patent.
`
`The ‘001 Patent itself confirms the use of Vellacott’s imputer as the
`
`“preferred embodiment” of all of its hardware structure, where the patent states
`
`“An example of such a photosensor array 32 is the VLSI Vision Limited (VVL)
`
`9
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`
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`Single Chip Video Camera Model #ASIS 1011.” (1302-040 at 13:35-37). As
`
`confirmed by the analysis of Dr. Jeffrey A. Miller, Vellacott’s imputer is the
`
`claimed vehicular vision system of claim 1. (1311 at ¶26, ¶43, and ¶¶61-75). As
`
`explained further below, a “vehicular vision system” is basically a camera, image
`
`processor, and control for an automobile.
`
`an imager comprising a lens and a CMOS photosensor array;
`
`This limitation is disclosed by Vellacott, where the reference illustrates an
`
`architecture for its lens and CMOS photosensor array that is substantially identical
`
`to that described in the ‘001 Patent. A simple comparison of Figure 1 from
`
`Vellacott with FIG. 5 from the ‘001 Patent confirms this point:
`
`
`
`
`
`Vellacott Figure 1
`
`
`
`
`
`‘001 Patent FIG. 5
`
`
`
`Thus, the two drawings illustrate substantially the same architecture for the
`
`CMOS image sensor. Specifically, the black squares in Vellacott’s Figure 1
`
`represent individual photosensitive CMOS sensor elements, or “pixels” (1304-
`
`001), and the hollow squares 32a of FIG. 5 of the ‘001 Patent are designated as
`
`10
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`“photosensor elements.” A person of ordinary skill would understand that these
`
`respective elements are the same.
`
`The ‘001 Patent further confirms that the very device represented in Figure 1
`
`of Vellacott, namely the CMOS image sensor of “VVL’s Peach camera,” is the
`
`preferred embodiment of the claimed CMOS photosensor array (32). (1302-040 at
`
`13:35-37). Vellacott therefore clearly discloses the CMOS photosensor array
`
`limitation of this element, as admitted by the ‘001 Patent.
`
`Vellacott further discloses the lens limitations of this claim element, where
`
`the reference specifically teaches “a chip-mounted microlens (Fig. 6)” for the
`
`vehicular vision embodiment. (1304-004 at col. 3, first full paragraph). The
`
`“imager” of Vellacott is therefore the combination of the CMOS photosensor
`
`array, as shown in Figure 1 of the reference, together with the chip-mounted
`
`microlens, which is the same combination of elements (lens 30 plus photosensor
`
`array 32) shown in FIG. 6B of the ‘001 Patent. (1302-018). This analysis is
`
`confirmed by the expert declaration of Jeffrey A. Miller, which details the
`
`components that form the Vellacott’s imager device, which includes a lens and
`
`CMOS photosensor array. (See also 1311 at ¶33, ¶¶61-63, ¶104).
`
`wherein said photosensor array comprises a plurality of photosensor
`elements;
`
`As illustrated above, Figure 1 of Vellacott shows “pixels,” otherwise known
`
`as photosensor elements, which are represented by the black squares arranged in an
`
`array. FIG. 5 of the ‘001 Patent similarly shows photosensor elements 32a, also
`
`arranged in an array. Thus, both Vellacott and the ‘001 Patent show a CMOS
`
`11
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`photosensor array having a plurality of photosensor elements. The ‘001 Patent
`
`admits that Vellacott’s CMOS array was its preferred embodiment, while Vellacott
`
`confirms that its CMOS imager and imputer were being sold to the ‘001 Patent
`
`Owner well before the claimed priority date of the patent. (1311 at ¶104).
`
`wherein said imager is disposed at an interior portion of a vehicle
`equipped with said vehicular vision system and
`
`This limitation is also disclosed by Vellacott, where the reference teaches
`
`that “The imputer was housed inside the rear-view mirror” (1304-004 at col. 3, first
`
`paragraph), which is at an interior portion of the vehicle by definition. Dr. Miller’s
`
`declaration further supports this well-known understanding. (1311 at ¶¶105, ¶123).
`
`wherein said imager views exterior of the equipped vehicle through
`a windshield of the equipped vehicle and forward of the equipped
`vehicle;
`
`As discussed above, the imager from Vellacott is the same CMOS
`
`photosensor array disclosed in the ‘001 Patent. Although Vellacott does not limit
`
`its CMOS camera’s orientation to any particular direction, Vellacott does not
`
`explicitly disclose that the CMOS camera faces forward to view the exterior
`
`through the windshield of the equipped vehicle. Vellacott does, however, disclose
`
`a multitude of different applications for its CMOS camera and imputer vision
`
`system, and does limit its application to only rearward-facing orientation. Other
`
`than the method of using the CMOS camera/imputer system (i.e., forward instead
`
`of backward and sideways), the ‘001 Patent does not show any structural
`
`difference between the forward and backward embodiments.
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`12
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`Quite the contrary, the specification of the ‘001 Patent expressly admits that
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`the photosensor array 32 and the logic and control circuit 34 are the same as that
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`for the rearward facing embodiment. (1304-050 at 33:7-46). In fact, the ‘001 Patent
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`even further admits that the only difference between the forward and rearward
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`facing embodiments is purely functional, that is, only the method of operating the
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`two embodiments differs from one to the other.
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`As stated in the ‘001 Patent, “The method for processing the forward field of
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`view image is the same as that shown through step S140 in the flow chart of FIG.
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`7A, and is generally the same as to steps S150 and S160 as detailed in the flow
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`chart FIG. 8A, except that steps S155, S156 and S162 are excluded.” (1302-50 at
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`33:67 through 34:5, emphases added) The ‘001 Patent thus admits that its method
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`of operating the forward-facing image sensor (a known device) is at least
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`“generally the same” as its method for operating the rearward-facing image sensor
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`(a known method). The Patent Owner does not describe anything inventive, or that
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`unexpected results are realized, by the mere elimination of a few non-critical
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`programming steps (S155, S156, S162) pertaining only to programming steps to
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`verify a zone of the imager and apply color correction, and none of these three
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`steps are featured in the claims of the ‘001 Patent. (1311 at ¶¶105-110).
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`Accordingly, given that the device recited in claim 1 differs from Vellacott
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`only in its manner of use, and is otherwise structurally identical to Vellacott, claim
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`1 of the ‘001 Patent presents nothing more than an obvious reversal of the CMOS
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`imager of Vellacott’s imputer. Claim 1 merely reverses the direction in which
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`Vellacott’s CMOS camera is known to be oriented. Thus, claim 1 presents nothing
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`more than an obvious reversal of parts of the same structure. That is, Vellacott’s
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`CMOS imager still resides in the rearview mirror at the windshield; only the
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`CMOS imager of the vehicular vision system has been reversed to face forward.
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`Reversal of parts, however, without evidence of any of the Graham factors
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`demonstrated in the record, has been held to be an obvious modification, and well
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`within the skill of an ordinary person having skill in the art. See In re Gazda, 219
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`F.2d 449, 104 USPQ 400 (CCPA 1955) (Prior art disclosed a clock fixed to the
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`stationary steering wheel column of an automobile while the gear for winding the
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`clock moves with steering wheel; mere reversal of such movement, so the clock
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`moves with wheel, was held to be an obvious modification). See also MPEP
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`2144(VI)(A) – Reversal of Parts.
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`
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`The mere change of orientation of a single element of a known device was
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`also obvious because it constituted nothing more than a rearrangement of parts. See
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`In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic
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`power press which read on the prior art except with regard to the position of the
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`starting switch were held unpatentable because shifting the position of the starting
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`switch would not have modified the operation of the device). In the present case,
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`changing the orientation of Vellacott’s camera to face forward would not have
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`modified the operation of the device, as admitted by the ‘001 Patent. (1302-050 at
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`34:1-5). (See also Ex. 1311 at ¶¶66-67, 105-109; MPEP 2144(VI)(C) –
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`Rearrangement of Parts).
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`More particularly, Kenue, for example, discloses a forward-facing solid-state
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`camera “at the upper center of the windshield to capture the driver’s view of the
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`road ahead” (1305-009 at 2:31-32), as claimed. In fact, the ‘001 Patent also admits
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`that forward-facing image sensors were well known in the art at the time of the
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`claimed invention. (1302-034 at 1:41 through 1302-035 at 3:38).
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`The rationale to combine Kenue with Vellacott can also be justified based on
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`MPEP 2143(I)(C) (use of known technique to improve similar devices (methods,
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`or products) in the same way). To invalidate a claim based on MPEP 2143(I)(C),
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`the following factors must be shown:
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`(1) a finding that the prior art contained a “base” device (method,
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`or product) upon which the claimed invention can be seen as an
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`“improvement;”
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`(2) a finding that the prior art contained a "comparable" device
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`(method, or product that is not the same as the base device) that
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`has been improved in the same way as the claimed invention;
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` (3) a finding that one of ordinary skill in the art could have applied
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`the known “improvement” technique in the same way to the
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`“base” device (method, or product) and the results would have
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`been predictable to one of ordinary skill in the art; and
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`(4) whatever additional findings based on the Graham factual
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`inquiries may be necessary, in view of the facts of the case
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`under consideration, to explain a conclusion of obviousness.
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`Factor (1) is easily demonstrated. Vellacott would constitute the “base
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`device,” and changing Vellacott’s orientation to face forward would be seen as the
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`“improvement.” No other modifications to Vellacott’s device would be required to
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`meet the limitations of this claim. (1311 at ¶66).
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`Factor (2) is also easily demonstrated. Kenue’s vehicle vision system (see
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`Fig. 1) is a “comparable” device to Vellacott, which has been “improved” in the
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`same way as the claimed invention, namely, oriented to face forward to view the
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`road exterior to and in front of the vehicle. Kenue’s system only otherwise differs
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`from Vellacott’s with respect to the fact that Kenue uses a solid-state CCD camera,
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`whereas Vellacott utilizes a solid-state CMOS camera. The two systems otherwise
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`operate the same, and for the same general purposes. (1311 at ¶¶68, 73-74, 223).
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`With respect to factor (3), one of ordinary skill in the art would have easily
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`understood to apply the known “improvement” of orienting the camera forward in
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`the same way as that shown by Kenue, since the results would have been obviously
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`predictable. Both the Kenue and the ‘001 Patent clearly teach that forward-facing
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`photosensor arrays and image sensors were known in the art at the time, and
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`utilization of such forward-facing sensors would have predictably been able to
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`view the forward scene exterior to the vehicle. (1311 at ¶¶36, 62, 68).
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`Therefore, orienting Vellacott’s camera forward, as shown by Kenue, would
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`have been “obvious to try.” Pursuant to KSR, the choice to orient Vellacott’s
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`camera forward constituted nothing more than the selection from a finite number
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`of identified, predictable solutions, with a reasonable expectation of success. See
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`KSR, 550 U.S. at 421. Vellacott discloses at least one embodiment for a vehicular
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`vision system in which the camera faces rearward and sideways. The only other
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`directions available to orient Vellacott’s camera would be up, down, and forward.
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`The viewable scene from each of these identified, finite orientations would have
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`been predictable to a person of ordinary skill. (1311 at ¶36, ¶62, ¶¶65-66, ¶106).
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`Factor (4) is not necessary to demonstrate, because there are no additional
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`factual inquiries based on Graham to consider. The ‘001 Patent admits that the
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`system structure is identical between the forward and rearward facing photosensor
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`array orientations, and thus no unexpected results would occur from the mere
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`change in orientation of the camera; all components would work exactly as
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`expected whether facing forward or backward, namely headlights will still be
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`detected and identified. (1311 at ¶62). The ‘001 Patent clearly states that its two
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`orientations differ only with respect to the method of operating the system, and
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`even then, these two methods are still “generally the same,” differing only by the
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`elimination of three steps in the algorithmic processing. (1302-050 at 34:1-5).
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`Therefore, the orientation of the camera, according to the ‘001 Patent itself,
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`does not modify the structure of the vehicular vision system, but instead only the
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`manner of operating the system. The manner of operating a device, however, does
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`not differentiate an apparatus claim from the prior art. See MPEP 2114(II)
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`“Functional claim language that is not limited to a specific structure covers all
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`devices that are capable of performing the recited function.” MPEP 2114(IV).
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`Accordingly, a person of ordinary skill in the art would have been capable of