In re Magna Electronics, Inc., 611 Fed.Appx. 969 (2015)
`
`611 Fed.Appx. 969
`United States Court of Appeals,
`Federal Circuit.
`
`In re MAGNA ELECTRONICS, INC., Appellant.
`In re Magna Electronics, Inc., Appellant.
`
`that achieved predictable result; high costs and
`other companies' purported preferences that led
`to assignee's commercial success did not raise
`doubt that CMOS camera-based automotive
`vision system could be manufactured. 35
`U.S.C.A. § 103(a).
`
`Cases that cite this headnote
`
`Nos. 2014–1798, 2014–1801.
`|
`May 7, 2015.
`
`[2]
`
`Patents
`Automobiles and vehicles
`
`Synopsis
`Background: The Patent and Trademark Office (PTO),
`Patent Trial and Appeal Board, 2014 WL 2360424 and 2014
`WL 2466134, affirmed examiners' rejection of claims as
`obvious in patents that were directed to vehicular rearview
`vision systems comprising image capture device and display
`system. Assignee appealed.
`
`Holdings: The Court of Appeals held that:
`
`[1] use of CMOS camera in prior art vehicular vision systems
`was obvious, and
`
`[2] use of prior art graphic overlay with prior art vehicular
`vision system was obvious.
`
`Affirmed.
`
`West Headnotes (3)
`
`[1]
`
`Patents
`Automobiles and vehicles
`
`Use of camera with complementary metal-oxide-
`semiconductor (CMOS), i.e., small amount of
`memory on computer motherboard that stored
`basic input-output system (BIOS) settings, in
`prior art vehicular vision systems was obvious,
`and thus claim in patent directed to vehicular
`rearview vision system comprising
`image
`capture device was invalid, since substitution of
`prior art charge-coupled device (CCD) camera
`with CMOS camera was but mere substitution
`of one element for another known in field
`
`Use of prior art graphic overlay with prior
`art vehicular vision system was obvious, and
`thus patent that was directed to vehicular
`rearview vision system claiming regularly
`spaced horizontal lines that showed relative
`position of objects behind vehicle to driver
`was invalid, since prior art conceived of
`providing numerical indicators, even if patent
`had required distance determination, and person
`of ordinary skill would have been motivated
`to apply descending scale in prior art, perhaps
`inverted for design purposes, to graphic overlay
`of patent, patent's shortened horizontal lines
`provided same information and functionality as
`prior art's long horizontal lines, and assignee
`did not establish nexus between secondary
`considerations of nonobviousness and claimed
`invention. 35 U.S.C.A. § 103(a).
`
`Cases that cite this headnote
`
`[3]
`
`Patents
`In general; utility
`
`US Patent 5,949,331, US Patent 6,222,447.
`Invalid in Part.
`
`Cases that cite this headnote
`
`*969 Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. 90/011,478,
`90/011,477.
`
`Attorneys and Law Firms
`
`Terence J. Linn, Gardner, Linn, Burkhart & Flory, LLP,
`Grand Rapids, MI, for appellant.
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
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`In re Magna Electronics, Inc., 611 Fed.Appx. 969 (2015)
`
`Nathan K. Kelley, Office of the Solicitor, United States Patent
`and Trademark Office, Alexandria, VA, for appellee Michelle
`K. Lee. Also represented by Farheena Yasmeen Rasheed,
`Lore A. Unt, Thomas W. Krause.
`
`*970 Before PROST, Chief Judge, LOURIE and CHEN,
`Circuit Judges.
`
`Opinion
`
`PER CURIAM.
`
`Magna Electronics, Inc. (“Magna”) appeals from two related
`ex parte reexamination decisions of the United States Patent
`and Trademark Office (“PTO”), Patent Trial and Appeal
`Board (“Board”). In the first, Magna appeals from the Board's
`decision affirming the examiner's rejection of claims 45 and
`107 of U.S. Patent 6,222,447 (“the ′447 patent”) as obvious
`under 35 U.S.C. § 103(a) (2006). 1 Ex parte Magna Elecs.,
`Inc., No. 2013–004164, 2014 WL 2360424 (P.T.A.B. May
`28, 2014) (“Decision I ”). In the second, Magna appeals from
`the Board's decision affirming the examiner's rejection of
`claims 3 and 5–9 of U.S. Patent 5,949,331 (“the ′331 patent”)
`as obvious under § 103(a). Ex parte Magna Elecs., Inc., No.
`2013–006429, 2014 WL 2466134 (P.T.A.B. May 28, 2014)
`(“Decision II ”). Because the Board did not err, we affirm.
`
`BACKGROUND
`
`Magna is the assignee of the ′447 and ′331 patents, which
`are directed to vehicular rearview vision systems comprising
`an image capture device and a display system. Notably, the
`′447 patent describes a CMOS imaging array as the image
`capture device, and the ′331 patent describes a display system
`that enhances images by using a graphic overlay of horizontal
`lines to indicate distance.
`
`A
`
`Claim 45 is representative of the two claims at issue in the
`′447 patent and reads as follows:
`
`45. A rearview vision system for a vehicle having a gear
`actuator, comprising:
`
`an image capture device mounted at the rear of the
`vehicle and having a field of view directed rearwardly
`of the vehicle, wherein said image capture device
`
`comprises a pixelated imaging array and wherein said
`pixelated array comprises a CMOS imaging array;
`
`a display system viewable by a driver of the vehicle
`which displays a rearward image output of said image
`capture device;
`
`a graphic overlayer superimposed on said rearward
`image when the gear actuator of the vehicle selects a
`reverse gear; and
`
`wherein said graphic overlayer is disabled when the gear
`actuator of the vehicle is not in reverse gear.
`
`′447 patent col. 14 ll. 31–44, col. 15 ll. 12–15.
`
`In February 2011, a third party requested a second ex parte
`reexamination of several claims of the ′447 patent, which the
`PTO granted. In a Final Office Action, the examiner rejected
`most of the challenged claims. In particular, the examiner
`rejected claims 45 and 107 as obvious over a combination
`of Japanese Patent Application No. 64–14700 (“JP #700”),
`Japanese Patent Application No. 60–79889 (“JP #889”), and
`Wang et al., CMOS Video Cameras, IEEE 100–03 (1991)
`(“Wang”). Magna initially appealed the entire rejection to the
`Board; however, in its reply brief, Magna withdrew its appeal
`without prejudice as to all claims except claims 45 and 107.
`
`On appeal, the Board affirmed the examiner's rejection of
`claims 45 and 107, *971 finding that it would have been
`obvious to combine the vehicular vision systems of JP ′700
`and JP ′889 with the CMOS camera disclosed in Wang.
`Decision I at *6. First, the Board found that Wang generally
`teaches the use of CMOS cameras in “smart vision systems,”
`which necessarily includes vehicular vision systems. Id. at
`*2. Next, the Board found that replacing the CCD camera
`of JP ′700 and JP ′889 with the CMOS camera of Wang
`would have been “mere substitution of one element for
`another known in the field” and “would have achieved
`the predictable result of reducing the size, cost, and power
`consumption” of CCD-based systems. Id. In so doing, the
`Board rejected Magna's proffered expert testimony, finding
`it biased, unsupported, and contrary to the express teachings
`of Wang. Id. at *3. Last, the Board found that Magna failed
`to provide adequate evidence of secondary considerations to
`rebut the otherwise strong prima facie case of obviousness. Id.
`at *4–6. According to the Board, Magna failed to show, inter
`alia, (1) a nexus between the alleged commercial success and
`the claimed invention; (2) any expert skepticism doubting
`
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`In re Magna Electronics, Inc., 611 Fed.Appx. 969 (2015)
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`whether CMOS camera-based vehicular vision systems could
`be manufactured; and (3) any unexpected results. Id.
`
`B
`
`Claim 3 is representative of the claims at issue in the ′331
`patent and reads as follows:
`
`3. A vehicular rearview vision system, comprising:
`
`at least one image capture device positioned on the
`vehicle and adapted to capturing images of objects;
`a display system which displays an image which
`comprises a rearward facing view of objects captured by
`said at least one image capture device;
`
`wherein said display system enhances the displayed
`image by including an image enhancement comprising
`a visual prompt perspectively related to objects in the
`image displayed and which visually informs the driver
`of what is occurring in the area surrounding the vehicle
`including relative position of objects behind the vehicle;
`and
`
`wherein said image enhancement comprises a graphic
`overlay superimposed on the displayed image indicating
`distances of objects from the vehicle and wherein said
`graphic overlay comprises at least one horizontal mark
`superimposed on the displayed image.
`
`′331 patent col. 12 l. 59–col. 13 l. 9. Claim 5, in addition
`to reciting the system of claim 3, further requires “wherein
`said at least one horizontal mark comprises a plurality of
`short horizontal lines superimposed on the image at regular
`rearward intervals.” Id. col. 13 ll. 13–16. Claims 6–9 further
`depend from claim 5.
`
`In February 2011, a third party similarly requested a second
`ex parte reexamination of several claims of the ′331 patent,
`which the PTO granted. In a Final Office Action, the examiner
`rejected all of the challenged claims. Notably, the examiner
`rejected claims 3 and 5–9 as obvious over a combination of JP
`′700 and JP ′889. Magna initially appealed the entire rejection
`to the Board; however, in its reply brief, Magna withdrew its
`appeal without prejudice as to all claims except claims 3 and
`5–9.
`
`On appeal, the Board affirmed the examiner's rejection of
`claims 3 and 5–9, finding that it would have been obvious
`
`to combine the graphic overlay of JP ′ 889 with the vision
`system of JP ′700. Decision II at *5. First, the Board noted
`that the claims do not require a distance measurement; they
`only require “a display that indicates distance from objects
`in some *972 manner.” Id. at *2 (referring to ′331 patent
`col. 10 ll. 56–63). The Board then found that JP ′889 “teaches
`horizontal lines” that “indicate [ ] distances of objects from a
`vehicle by virtue of being superimposed at regular, rearward
`intervals onto an image taken by a rear-facing camera,” as
`required by the claims. Id. at *3. Even if the claims in fact
`require a distance measurement, the Board noted, JP ′889
`also “contains markings that indicate whether an object is
`closer to the vehicle (50) or farther from the vehicle (200).”
`Id. The Board thus rejected as unpersuasive Magna's contrary
`expert testimony. Next, the Board found that claim 5's “short
`horizontal lines” were but a design choice and provide the
`same functionality as the horizontal lines disclosed in JP
`′889. Id. at *4. Last, the Board found that Magna failed to
`provide adequate evidence of secondary considerations of
`nonobviousness. Id. at *4–5.
`
`Magna timely appealed from both decisions, and we have
`jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`
`We review the Board's legal conclusions de novo, In
`re Elsner, 381 F.3d 1125, 1127 (Fed.Cir.2004), and the
`Board's factual findings underlying those determinations for
`substantial evidence, In re Gartside, 203 F.3d 1305, 1316
`(Fed.Cir.2000). “Substantial evidence ... means such relevant
`evidence as a reasonable mind might accept as adequate to
`support a conclusion.” Consol. Edison Co. v. NLRB, 305 U.S.
`197, 217, 59 S.Ct. 206, 83 L.Ed. 126 (1938). Obviousness
`is a question of law based on underlying factual findings, In
`re Baxter, 678 F.3d 1357, 1361 (Fed.Cir.2012), such as what
`a reference teaches and “[s]uch secondary considerations
`as commercial success, long felt but unsolved needs, [and]
`failure of others,” Graham v. John Deere Co., 383 U.S. 1, 17,
`86 S.Ct. 684, 15 L.Ed.2d 545 (1966).
`
`A
`
` With respect to the ′447 patent, Magna argues that the
`[1]
`PTO did not establish a prima facie case of obviousness
`because Wang does not teach, suggest, or motivate the use of
`CMOS cameras in vehicular vision systems. Instead, Magna
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`In re Magna Electronics, Inc., 611 Fed.Appx. 969 (2015)
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`contends, Wang teaches away from such use because CMOS
`imager technology “w[as viewed] to be insensitive to low
`light conditions (and thus not particularly suitable for use as
`a rear backup camera at night), to have inferior image quality
`and to be difficult and costly to make.” ′447 Appellant's Br.
`21. Magna further argues that it provided strong evidence
`of nonobviousness, such as commercial success, long felt
`need and failure of others, skepticism of experts, unexpected
`results, copying, and licensing. Id. at 37–58.
`
`The PTO responds that each of the Board's findings is
`supported by substantial evidence, and that Magna failed to
`provide adequate evidence of secondary considerations of
`nonobviousness. We agree, and therefore affirm the Board's
`conclusion that claims 45 and 107 would have been obvious
`over JP ′700, JP ′ 889, and Wang.
`
`As an initial matter, substantial evidence supports the Board's
`finding that Wang teaches the use of CMOS cameras in
`“smart vision systems.” ′447 Joint Appendix (“#447 J.A.”)
`297 (“We introduce a new capability that extends the CMOS
`ASIC marketplace in[to] a sector of ... image sensing and
`processing, covering applications from electronic cameras to
`‘smart’ vision systems.”). It was not error for the Board to
`further find that vehicular rearview vision systems, such as
`those disclosed in JP ′700 and JP ′889, are such “smart vision
`systems.” Decision I at *2. *973 Nonetheless, an explicit
`teaching, suggestion, or motivation is not necessary to support
`a conclusion of obviousness. KSR Int'l Co. v. Teleflex, Inc.,
`550 U.S. 398, 415–16, 127 S.Ct. 1727, 167 L.Ed.2d 705
`(2007). Obviousness is a flexible inquiry, and we are tasked
`with determining whether a claimed improvement “is more
`than the predictable use of prior art elements according to
`their established functions.” Id. at 417, 127 S.Ct. 1727.
`
`To that end, replacing the CCD camera of JP ′700 and JP ′889
`with a CMOS camera was but “the mere substitution of one
`element for another known in the field” that “achieved [a]
`predictable result.” Decision I at *2 (referring to KSR, 550
`U.S. at 415–16, 127 S.Ct. 1727). As the Board found, Wang
`highlights several weaknesses of CCD technology, namely,
`that it appears “cumbersome, power-hungry and expensive.”
`Id.; see also ′447 J.A. 297. Wang then notes that “high quality
`sensors” can instead be “implemented entirely” using CMOS
`technology to mitigate those shortcomings. Id. The claimed
`improvement of replacing the CCD cameras of JP ′700 and
`JP ′889 with the CMOS camera of Wang is thus nothing more
`“than the predictable use of prior art elements.” KSR, 550 U.S.
`
`at 417, 127 S.Ct. 1727. We find Magna's arguments to the
`contrary unpersuasive.
`
`Substantial evidence also supports the Board's finding that
`Magna lacks sufficient evidence to show nonobvious-ness.
`With respect to Magna's commercial success argument, for
`example, the Board correctly found that Magna fails to relate
`its alleged 35% market share in the vehicular vision system
`industry to its use of a CMOS camera. Ormco Corp. v. Align
`Tech., Inc., 463 F.3d 1299, 1311–12 (Fed.Cir.2006) (noting
`that a nexus must exist between a product's commercial
`success and the claimed invention); see also ′447 Appellant's
`Br. 53 (generally stating: “that so many vehicles across so
`many automakers are at dealerships today with rear vision
`systems and graphic overlay and CMOS imaging devices and
`other features as claimed is clear and convincing evidence of
`commercial success”).
`
`Nor can Magna substantiate its claim of skepticism of experts.
`As we have noted, such arguments often require a showing
`of technical infeasibility or manufacturing uncertainty. See
`Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953,
`958 (Fed.Cir.1997) (finding that “violent explosions” that
`render manufacturing “unsafe” support such an argument).
`Yet here, Magna relies only on high costs and other
`companies' purported preferences. Such evidence “does
`not raise doubt that a CMOS camera-based automotive
`vision system can be manufactured.” Decision I at *5; see
`Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013
`(Fed.Cir.1983) (“[T]hat the two disclosed apparatus would
`not be combined by businessmen for economic reasons is not
`the same as saying that it could not be done because skilled
`persons in the art felt that there was some technological
`incompatibility that prevented their combinations.”).
`
`We therefore hold that the Board correctly concluded that
`it would have been obvious to use a CMOS camera in the
`vehicular vision systems of JP ′700 and JP ′889.
`
`B
`
` With respect to the ′331 patent, Magna argues that the
`[2]
`PTO did not establish a prima facie case because the JP
`′889 reference teaches using horizontal lines to indicate a
`positional relationship, whereas the claimed invention uses
`horizontal lines to generate a specific distance measurement.
`And, Magna contends, JP #889's descending scale cannot
`indicate distance. *974 With respect to claim 5, Magna
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`In re Magna Electronics, Inc., 611 Fed.Appx. 969 (2015)
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`argues that the short horizontal lines are not just a design
`choice. Last, Magna submits that it provided strong evidence
`of nonobviousness.
`
`The PTO responds that the Board's findings are supported by
`substantial evidence, and that Magna's evidence of secondary
`considerations of nonobviousness lacks a nexus to the
`claimed invention. We agree, and therefore affirm the Board's
`conclusion that claims 3 and 5–9 would have been obvious
`over JP ′700 and JP ′889.
`
`Substantial evidence supports the Board's finding that JP ′889
`teaches the graphic overlay claimed in the ′331 patent, i.e.,
`regularly spaced horizontal lines that show the driver the
`relative position of objects behind the vehicle. ′331 Joint
`Appendix (“#331 J.A.”) 262–65. We find Magna's argument
`to the contrary unpersuasive for two reasons. First, Magna's
`argument assumes that the ′331 patent requires a distance
`determination. Yet as the Board correctly found, the claims
`only require “indicating distances.” ′331 patent col. 10 ll. 56–
`63. JP ′889 does not need to teach quantitative measurements
`to render the graphic overlay of the ′331 patent obvious.
`Even so, as the Board found, JP ′889 conceives of providing
`numerical indicators. Decision II at *3; see also ′331 J.A. 261
`(fig.2). The fact that the numbers lie on a descending scale
`does not negate the fact that a person of ordinary skill would
`have been motivated to apply that scale, perhaps inverted for
`design purposes, to the graphic overlay of the ′331 patent.
`
`Second, Magna's argument emphasizes an alleged distinction
`between a positional relationship and an indication of a
`distance. Even assuming arguendo that such a distinction
`exists, the ′331 patent essentially treats the two terms
`coextensively: “[h]orizontal grid markings on the display
`may be provided to indicate distances behind the vehicle at
`particular markings. Such a grid would allow the driver to
`judge the relative position of vehicles behind the equipped
`vehicle.” Id. col. 10 ll. 56–59 (emphases added); see also
`id. col. 1 ll. 60–66. All that the ′331 patent requires is a
`graphic overlay to indicate the distance, i.e., relative position,
`of objects behind a vehicle. And, as the Board found, that is
`precisely what JP ′889 teaches.
`
`Magna's remaining arguments are similarly unpersuasive. As
`the Board found, JP ′889 teaches horizontal lines spaced at
`regular intervals, and shortening the length of the horizontal
`lines “would be an obvious design choice within the skill of
`the art.” In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). In this
`context, short horizontal lines provide the same information
`and functionality as long horizontal lines, and cannot be used
`as a distinguishing factor to render the claims nonobvious.
`Furthermore, as the Board found, Magna failed to provide
`adequate evidence of nonobviousness. Much like in the
`′447 appeal, Magna fails to establish a nexus between the
`secondary considerations of nonobviousness and the claimed
`invention, see, e.g., In re Kao, 639 F.3d 1057, 1069–70
`(Fed.Cir.2011) (noting that it is difficult to prove nexus
`without a showing that the claimed improvement causes
`success that the prior art would not); In re Huang, 100
`F.3d 135, 140 (Fed.Cir.1995) (holding that the inventor's
`opinion as to the purchaser's reason for buying the product
`is insufficient to demonstrate a nexus), and thus cannot rebut
`the prima facie showing.
`
`We therefore hold that the Board correctly concluded that it
`would have been obvious to use the graphic overlay of JP ′889
`with the vehicular vision system of JP ′700.
`
`*975 CONCLUSION
`
`We have considered Magna's remaining arguments, but find
`them unpersuasive. For the foregoing reasons, the Board's
`decisions affirming the rejections of claims 45 and 107 of
`the ′447 patent and claims 3 and 5–9 of the ′331 patent are
`affirmed.
`
`AFFIRMED
`
`All Citations
`
`611 Fed.Appx. 969
`
`Footnotes
`1
`Because the applications of the ′447 and ′331 patents were filed before March 16, 2013, the pre-Leahy-Smith America
`Invents Act version of § 103 applies. See Pub L. No. 112–29, 125 Stat. 284 (2011).
`
`End of Document
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`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
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` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
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