UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`VALEO NORTH AMERICA, INC., VALEO S.A., VALEO GMBH,
`VALEO SCHALTER UND SENSOREN GMBH,
`AND CONNAUGHT ELECTRONICS LTD.
`Petitioners
`v.
`
`MAGNA ELECTRONICS INC.
`Patent Owner
`_________________
`
`Case IPR2015-01414
`Patent 8,643,724
`__________________
`
`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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`
`
`Case IPPR2015-011414
`
`
`Paatent 8,6433,724
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`..... 4 
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`..... 8 
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`..... 9 
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`... 14 
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`Tba
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`I. 
`II. 
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`C. 
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`TABLE OOF CONTTENTS
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`TThe Board should nott institute innter partess review off the ’724 ppatent. .....
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`..... 1 
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`The Board should exeercise its diiscretion uunder § 3255(d) to denny institutioon
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`because thee Petition oonly providdes substanntially the ssame priorr art and
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`rguments ppreviously presented
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`to the Offfice. ..........
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`..................................
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`to provide aleo fails tbecause Vadeficient banalysis is viousness aIII.  VValeo’s obv
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`obviousneess. ............
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`
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`meaningful evidence tthat supports its alleggations of
`A. 
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`The ddeclarants
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`
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`ged their oopinion reggarding thee level of
`have chan
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`ordinnary skill inn the art. ....................................
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`Dr. WWolberg dooes not proovide any eevidence off experiencce in the
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`autommotive fiel
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`d. ...............................................
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`..................................
`... 11 
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`eliance on Wilhelm’s reDr. WWolberg’s and Dr. W
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`each otherr invalidatees
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`Valeoo’s assertioon that a peerson of orrdinary skiill in the arrt would haave
`... 12 
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`been motivatedd to combinne the referrences. .....
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`..................................
` 1.
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`SA would Dr. Wolbberg merely assumes that a POS
`have
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`combinedd Lemelsoon with Yammamoto annd Mitsubiishi. ..........
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`Dr. Wilhhelm merely assumes that a POSSA would
`have
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`..................................
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`combinedd Yamamooto and Miitsubishi. ..
`... 14 
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`The declarants’ pieecemeal appproach to tthe referennces evidennces
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`that a POOSA wouldd not have
`... 16 
`combined
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`the referennces. .........
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`DD.  Dr. WWolberg annd Dr. Wilhhelm fail too considerr the claimss as a wholle.
`... 17 
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`IV.  BBased on thhe evidencee presentedd by Valeoo, the propoosed combbination faiils to
`... 19 
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`reender all thhe recited ffeatures off the claimss obvious.
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`..................................
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`AA.  Dr. WWolberg’s ttestimony regarding
`
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`s Valeo’s parallax unndermines
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`
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`
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`asserrtion that thhe proposeed combinaations rendder indepenndent claimms 1,
`... 20 
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`49, 65, and 78 oobvious. ....................................
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`..................................
` 1.
`
`
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`
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`Dr. Wolbberg’s testiimony regaarding paraallax underrmines
`ned the
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`
`
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`Valeo’s aassertion thhat a POSAA would haave combi
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`
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`asserted rreferences in a way tthat places three cammeras in thee
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`
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`... 20 
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`claimed llocations. ...................................
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`..................................
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`Dr. Wolbberg’s testiimony regaarding paraallax underrmines
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`Valeo’s aassertion thhat the refeerences dissclose “sai
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`m A B C
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`B. 
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` 2.
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` 3.
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` 2.
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`d synthesizzed
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` i
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`

`
`1414 Case IPPR2015-01
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`
`
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`Paatent 8,6433,724
`
`
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`
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`image appproximatees a view aas would bee seen by aa virtual
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`camera aat a single llocation exxterior of thhe equippeed vehicle”” .. 24 
`
`
` 3.
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`The ’7244 patent adddresses parrallax. ......
`
`..................................
`... 26 
`
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`
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`The pproposed ccombinatioons fail to rrender obv
`ious the cl
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`aimed “immage
`
`..................................
`... 26 
`
`
`
`
`proceessor” of claims 1, 499, 65, and 778. ...........
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`
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`The pproposed ccombinatioons fail to rrender obv
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`ious “wherrein,
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`respoonsive to p
`
`
`
`
`
`rocessing bby said immage processsor of receeived imagge
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`
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`
`
`
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`data, a synthesiized imagee is generatted withouut duplicatioon of objeccts
`
`
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`preseent in said first overlaap zone an
` of
`
`
`d in said seecond overrlap zone”
`... 28 
`
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`claimms 1, 49, 655, and 78. ...................................
`
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`..................................
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`
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`The pproposed ccombinatioons fail to rrender obv
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`ious “wherrein said
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`
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`
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`synthhesized imaage approxximates a vview as woould be seeen by a virttual
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`
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`cameera at a singgle location exterior
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`
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`of the equiipped vehiicle” of claaims
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`1, 49, 65, and 778. ..............................................
`... 33 
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`The pproposed ccombinatioon fails to rrender the ddependent
`claims
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`..................................
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`obvioous. ............................................................
`... 35 
` 1.
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`ual aimed visulose the clafail to disclbinations fThe propposed comb
`... 35 
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`
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`indications of claimms 8 and 9.. ...............
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`..................................
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`al aimed focalose the claails to disclbination faThe propposed comb
`... 37 
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`length inn claim 45. ..................................
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`CConclusionn ................
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`..................................
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`..................................
`... 39 
`................
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`B C
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`B. 
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`C. 
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`
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`DD. 
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`EE. 
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` 2.
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`V. 
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`

`
`Case IPR2015-01414
`Patent 8,643,724
`
`TABLE OF AUTHORITIES
`
`Cases 
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00628, Paper 21 (P.T.A.B. Oct. 20, 2014) .......................................4, 5
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 9, 11
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ........................................................................... 18
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper 19 (P.T.A.B. Nov. 21, 2013) .......................................... 5
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................... 9, 11, 18, 19
`LG Elec., Inc. v. ATI Tech. ULC,
`IPR2015-00327, Paper 13 (P.T.A.B. Jul. 10, 2015) ............................................ 5
`PNC Bank v. Secure Axcess, LLC,
`CBM2015-00039, Paper 9 (P.T.A.B. Jul. 10, 2015) ........................................... 5
`Ryko Mfg. Co. v. Nu-Star, Inc.,
`950 F.2d 714 (Fed. Cir. 1991) ............................................................................. 9
`
`Statutes 
`35 U.S.C. § 103(a) .............................................................................................. 9, 18
`35 U.S.C. § 314(a) .............................................................................................. 1, 39
`35 U.S.C. § 325(d) ........................................................................................... passim
`
`Regulations 
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`
`
`
`
` iii
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`

`
`Case IPR2015-01414
`Patent 8,643,724
`Patent Owner Magna Electronics Inc. (“Magna”) respectfully requests that
`
`the Board decline to initiate inter partes review of claims 7-9, 19-22, 24, 26-28,
`
`33-40, 44, 45, 57, 59, 60, 63, 72, 74, 83, and 85 of U.S. Patent No. 8,643,724 (“the
`
`’724 patent”) because Petitioners Valeo North America, Inc., Valeo S.A., Valeo
`
`GmbH, Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd.
`
`(collectively “Valeo”) have failed to show a reasonable likelihood of prevailing
`
`with respect to any of the challenged claims. 35 U.S.C. § 314(a).
`
`The Notice of Filing Date for the Petition in the instant proceeding issued on
`
`July 2, 2015. (Paper 4, p. 1.) This Preliminary Response is timely filed by October
`
`2, 2015, pursuant to 37 C.F.R. § 42.107(b).
`
`I.
`
`The Board should not institute inter partes review of the ’724 patent.
`
`Valeo has filed a total of four petitions challenging the ’724 patent. The
`
`Board denied institution of the first two petitions, which together challenged all of
`
`the claims in the ’724 patent. (IPR2015-00252 Institution Decision, Paper 7, p. 2;
`
`(IPR2015-00253 Institution Decision, Paper 7, p. 2.) Because Valeo’s first
`
`attempts failed, Valeo now takes a second bite at the apple and re-challenges all the
`
`claims in the ’724 patent in this Petition and the petition in IPR2015-01410.
`
`Although Valeo relies on two references not asserted in the previous petitions,
`
`many of the references are the same. Moreover, the arguments are essentially the
`
`same. In both sets of petitions, Valeo simply uses figures from asserted references
`
`
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`1
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`Case IPR2015-01414
`Patent 8,643,724
`to meet many of the claim limitations, regardless of what disclosure accompanies
`
`those figures. Valeo should not be given a second bite at the apple. Accordingly,
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`the Board should exercise its discretion under § 325(d) to deny institution of the
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`challenged claims.
`
`If the Board declines to exercise its discretion under § 325(d), it should still
`
`deny institution because Valeo fails to provide meaningful evidence that supports
`
`its allegations of obviousness. Valeo relies on the Declarations of Dr. George
`
`Wolberg and Dr. Ralph Wilhelm for attempting to show that a person of ordinary
`
`skill in the art (“POSA”) would have combined the references, but the declarants’
`
`testimonies are not helpful. First, both declarants have changed their positions
`
`regarding the level of skill a POSA would have had, rendering their testimonies
`
`unreliable. Moreover, Dr. Wolberg asserts that a POSA would have had two to five
`
`years of experience in the automotive field but provides no evidence that
`
`establishes his knowledge of or involvement with such a person. Finally, neither
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`declarant addresses combining all the asserted references without relying on the
`
`testimony from the other and assuming that a POSA would have made the
`
`combination. The declarants’ reliance on each other invalidates Valeo’s entire
`
`obviousness analysis because it indicates that even these supposed experts were not
`
`motivated to combine all the references. Due to the deficiencies of the Wolberg
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`2
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`

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`Case IPR2015-01414
`Patent 8,643,724
`and Wilhelm Declarations, Valeo fails to provide any meaningful evidence that
`
`supports its allegations of obviousness.
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`In addition, the challenged claims are patentable over the proposed
`
`combination because a POSA would not have combined the asserted references in
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`such a way as claimed. Valeo submits evidence in the Wolberg Declaration
`
`discussing the problem of parallax. Dr. Wolberg notes both the importance of
`
`addressing parallax and the universal knowledge of this problem. Dr. Wolberg
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`asserts that a fundamental flaw in the ’724 patent is the lack of discussion
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`regarding parallax. Despite Dr. Wolberg’s assertion, the ’724 patent does address
`
`parallax even though it does not use that word. In contrast, the references that Dr.
`
`Wolberg alleges render the challenged claims obvious fail completely to address
`
`parallax. Because under Valeo’s submitted evidence a POSA would have
`
`understood the importance of addressing parallax, a POSA would not have used
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`the camera locations of Yamamoto. Instead, a POSA would have used the
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`locations in Mitsubishi in which the cameras shared a common center of
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`projection. Because the claims require cameras located without common centers of
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`projection, the proposed combination fails to render the challenged claims obvious.
`
`In addition, Valeo fails to adequately show that the proposed combination
`
`renders all the challenged claims obvious. For example, Valeo simply asserts that
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`certain locations of the virtual camera and the rear camera are matters of design
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`Case IPR2015-01414
`Patent 8,643,724
`choice. This assertion, even if correct, is not sufficient to meet Valeo’s burden of
`
`showing a reasonable likelihood of success. Accordingly, the Board should deny
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`institution with respect to certain dependent claims for this additional reason.
`
`One or more of these deficiencies affect each of the challenged claims.
`
`Accordingly, Valeo fails to show a reasonable likelihood of prevailing with respect
`
`to any of the challenged claims.
`
`II. The Board should exercise its discretion under § 325(d) to deny
`institution because the Petition only provides substantially the same
`prior art and arguments previously presented to the Office.
`
`The Board should deny institution of inter partes review for the challenged
`
`claims because Valeo presents substantially the same prior art and substantially the
`
`same arguments in this follow-on Petition. The Board may reject a petition where
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`“the same or substantially the same prior art or arguments previously were
`
`presented to the Office.” 35 U.S.C. § 325(d) (emphasis added). Valeo’s follow-on
`
`Petition is a prime example of a petition envisioned as being within the Board’s
`
`discretion to reject under § 325(d).
`
`Simply relying on different references does not preclude the art or the
`
`arguments from being substantially the same. See Conopco, Inc. v. Procter &
`
`Gamble Co., IPR2014-00628, Paper 21, pp. 6-7, 10 (P.T.A.B. Oct. 20, 2014)
`
`(“Although the [two petitions] rely upon different prior art references, for the
`
`reasons that follow, we are persuaded that both petitions apply that art to make out
`
`
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`4
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`

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`Case IPR2015-01414
`Patent 8,643,724
`‘substantially the same’ argument regarding anticipation.”); PNC Bank v. Secure
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`Axcess, LLC, CBM2015-00039, Paper 9, p. 19 (P.T.A.B. Jul. 10, 2015) (“Although
`
`not the same references, Petitioner challenges the same claims using the same or
`
`substantially the same prior art or argument.”). Even when a petitioner presents a
`
`different primary reference, the Board may deny institution under § 325(d). See
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`Conopco, IPR2014-00628, Paper 21 at 9-10; LG Elec., Inc. v. ATI Tech. ULC,
`
`IPR2015-00327, Paper 13, pp. 11-12 (P.T.A.B. Jul. 10, 2015); Intelligent Bio-
`
`Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19, pp. 5-7
`
`(P.T.A.B. Nov. 21, 2013).
`
`Valeo previously challenged all the claims of the ’724 patent in IPR2015-
`
`00252 and IPR2015-00253. But the Board denied institution because Nissan and
`
`Hino do not disclose “wherein said synthesized image approximates a view as
`
`would be seen by a virtual camera at a single location exterior of the equipped
`
`vehicle.” (See, e.g., IPR2015-00252 Institution Decision, Paper 7, pp. 12-15.) In
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`re-challenging the claims in this Petition, Valeo replaces Nissan and Hino with
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`Yamamoto and Mitsubishi, and adds Aishin in the combination asserted against
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`five of the challenged claims. But Lemelson, Wang, Aishin (other than adding it to
`
`the five claims), Niles, Schmidt, Fuji, Otsuka, Conner, Sato, Paff, King, and
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`Goesch are applied in the same manner as in IPR2015-00252 and IPR2015-00253.
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`Moreover, Yamamoto and Mitsubishi are substantially similar to Nissan and Hino.
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`
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`5
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`Case IPR2015-01414
`Patent 8,643,724
`Even if the art is not substantially the same, Valeo’s arguments are. In
`
`essence, Valeo unsuccessfully relied primarily on the figures of Nissan and Hino to
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`allege that the combination of these references renders obvious the claim limitation
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`of “wherein said synthesized image approximates a view as would be seen by a
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`virtual camera at a single location exterior of the equipped vehicle,” regardless of
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`what disclosure, or lack of disclosure, accompanies those figures. (See IPR2015-
`
`00252 Petition, Paper 1, p. 29.)
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`Similarly, Valeo now relies primarily on a figure of Yamamoto as disclosing
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`this same claim feature: “Yamamoto describes a system having three cameras, yet,
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`the image in Fig. 5 shows one single rearward view as though it was captured by
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`one camera located in a different place than any one of cameras 1-3.” (Petition, p.
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`29.) But Valeo also again ignores the lack of disclosure that accompanies the
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`figure. For example, there is no discussion in Yamamoto of this view
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`approximating a view as would be seen by a virtual camera at a single location. In
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`addition, Valeo relies on a reference that, according to Valeo’s own expert, would
`
`suffer from the problems of parallax. (See Section IV.A). Accordingly, even if
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`Figure 5 of Yamamoto shows what Valeo alleges, it is unsupported by actual
`
`disclosure, just as the figures of Nissan. Valeo’s repeated reliance on unsupported
`
`figures amounts to substantially the same argument. The Board should therefore
`
`exercise its discretion under § 325(d) to deny institution of the Petition.
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`
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`6
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`

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`Case IPR2015-01414
`Patent 8,643,724
`Valeo’s attempts to remove its Petition from the Board’s discretionary
`
`authority are not persuasive. First, Valeo’s suggestion that § 325(d) does not apply
`
`to inter partes review is baseless. (See Petition, pp. 4-5.) The statute expressly
`
`applies to “chapter 31,” which is for inter partes review. The Board may therefore
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`reject Valeo’s follow-on Petition under § 325(d).
`
`Second, Valeo’s allegation that the Petition presents “new and previously
`
`unknown reference(s) and combinations of references, and new and different
`
`arguments that could not have been presented previously, based on the results of
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`prior art searches previously performed and/or interpretations of those references
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`then-available to Petitioner” (id. at 3-4) strains credibility. Valeo provides no
`
`reason why Yamamoto and Mitsubishi could not have been found earlier. Yet, in
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`no more than just over a month’s time—from the non-Institution Decision to the
`
`filing of this Petition—Valeo was able to find Yamamoto and Mitsubishi and
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`assert this combination in the Petition. There was no change in availability of these
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`references, but just a sudden need to attempt to correct deficiencies of Valeo’s
`
`previous petitions.
`
`Finally, Valeo’s statement that “[n]one of the grounds of unpatentability in
`
`the current Petition rely on exactly the same combination of prior art as the
`
`grounds of unpatentability asserted against the same claims in the ’252/253 IPRs”
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`(id. at 4.) fails to recognize the full extent of the Board’s discretion. The
`
`
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`7
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`Case IPR2015-01414
`Patent 8,643,724
`consideration is whether the art or arguments are the same or substantially the
`
`same, not whether the combinations are exactly the same. Valeo is simply seeking
`
`a second bite at the apple. Accordingly, the Board should reject Valeo’s follow-on
`
`Petition under § 325(d).
`
`III. Valeo’s obviousness analysis is deficient because Valeo fails to provide
`meaningful evidence that supports its allegations of obviousness.
`
`Valeo relies on the Wolberg and Wilhelm Declarations for attempting to
`
`show that a POSA would have combined the references, but the declarants’
`
`testimonies are not helpful. First, both declarants have changed their positions
`
`regarding the level of skill a POSA would have had, rendering their testimonies
`
`unreliable. Moreover, Dr. Wolberg asserts that a POSA would have had two to five
`
`years of experience in the automotive field but provides no evidence that
`
`establishes his knowledge of or involvement with such a person. Finally, neither
`
`declarant addresses combining all the asserted references without relying on the
`
`testimony from the other and assuming that a POSA would have made the
`
`combination, which invalidates Valeo’s entire obviousness analysis because it
`
`indicates that even these supposed experts were not motivated to combine all the
`
`references. Due to the deficiencies of the Wolberg and Wilhelm Declarations,
`
`Valeo fails to provide any meaningful evidence that supports its allegations of
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`obviousness.
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`8
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`Case IPR2015-01414
`Patent 8,643,724
`A. The declarants have changed their opinion regarding the level of
`ordinary skill in the art.
`
`An invention is unpatentable under pre-AIA 35 U.S.C. § 103(a) “if the
`
`differences between the subject matter sought to be patented and the prior art are
`
`such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art.” 35 U.S.C.
`
`§ 103(a) (2006) (emphasis added). Accordingly, § 103 requires a determination of
`
`factual inquiries, known as the Graham factors, that include resolving the level of
`
`ordinary skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see also
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007) (“While the sequence of
`
`these questions might be reordered in any particular case, the [Graham] factors
`
`continue to define the inquiry that controls.”). Because a finding of obviousness
`
`depends on the perspective of a POSA, resolving the level of ordinary skill in the
`
`art is necessary to maintain objectivity in the obviousness inquiry. Ryko Mfg. Co. v.
`
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`
`One deficiency in the previous set of petitions was a failure to resolve the
`
`level of ordinary skill in the art. The petitions did not even address the level of skill
`
`while the supporting declarations proposed different and unrelated levels. In an
`
`attempt to correct this deficiency, the current Petition does propose a level of skill
`
`and each supporting declaration proposes the same level of skill. But the currently
`
`proposed level of skill differs from both declarants’ previous proposed level of
`
`
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`9
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`Case IPR2015-01414
`Patent 8,643,724
`skill. This change in testimony indicates that the declarants’ testimonies are
`
`unreliable and still leave one to question which level of skill is correct.
`
`Previously, Dr. Wolberg opined that a POSA was “someone who was
`
`familiar with basic computer vision systems and the concepts of image stitching
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`and image compositing documented in the vision systems literature prior to May of
`
`1996.” (IPR2015-00252 Wolberg Decl., Ex. 1019 ¶ 25.) He added that a POSA
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`“may have been an undergraduate student in mathematics, engineering, or
`
`computer science, and should have had at least one course in image processing,
`
`computer graphics, or computer vision.” (Id. at 26.) He further added that a POSA
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`“may have worked in the fields of image processing, computer graphics, or
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`computer vision in academia (either as a professor or a student), for a technology
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`company, or for a government.” (Id. at 27.)
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`Previously, Dr. Wilhelm opined that a POSA was “a person with at least a
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`bachelor’s degree in electrical engineering, computer science, or physics.”
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`(IPR2015-00252 Wilhelm Decl., Ex. 1020 ¶ 18.) He added that a POSA “would
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`have had at least 2-5 years of experience with human factors for designs, i.e., how
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`humans interacted with a display in a vehicle.” (Id.) He further added that a POSA
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`“would also have had a working understanding of microprocessor driven controls
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`for displays, actuators, and elementary decision making.” (Id. at 19.) Finally, Dr.
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`Wilhelm added that a POSA “would have been comfortable working in a systems
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`Patent 8,643,724
`environment and would be familiar with control theory with respect to
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`instrumentation displays in automotive vehicles.” (Id.)
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`Each declarant has now changed their proposed level of skill of a POSA,
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`even though they are providing testimony regarding the same patent and the same
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`challenged claims. Now they each state that a POSA “would have had a bachelor’s
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`or master’s degree in engineering, computer science, or physics with some
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`experience in the automotive industry (e.g., two to five years). This person would
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`also have had a working understanding of combining image data from multiple
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`cameras and microprocessor driven controls for displays, actuators, and elementary
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`decision making.” (Wolberg Decl., Ex. 1020 ¶ 25; Wilhelm Decl., Ex. 1022 ¶ 18.)
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`This change in position renders the declarants’ testimonies unreliable. As
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`already noted, resolving the level of skill is fundamental to a determination of
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`obviousness. See Graham, 383 U.S. at 17; KSR, 550 U.S. at 407. Which proposed
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`level of skill do the declarants believe is correct? What other aspects of their
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`testimonies are the declarants willing to change to overcome a deficiency? At best,
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`the testimony of each declarant is unreliable and provides no meaningful evidence
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`to support Valeo’s assertions of obviousness.
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`B. Dr. Wolberg does not provide any evidence of experience in the
`automotive field.
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`Even accepting the currently proposed level of skill in the art as correct,
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`Valeo’s supporting evidence is deficient. For example, the currently proposed level
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`Patent 8,643,724
`of ordinary skill includes two to five years of experience in the automotive
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`industry. (Wolberg Decl. ¶ 25; Wilhelm Decl. ¶ 18.) While Dr. Wolberg asserts
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`that he “had those capabilities [him]self at the time the ’724 patent was filed”
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`(Wolberg Decl. ¶ 26), there is no evidence of any experience in the automotive
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`field. (See Wolberg CV, Ex. 1021.) There is also no evidence of supervising and
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`directing such persons over the course of his career, despite his assertion. (Wolberg
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`Decl. ¶ 26.) Thus, there is no evidence that tends to show Dr. Wolberg has
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`knowledge of or involvement with the POSA. Without this knowledge of the
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`POSA, Dr. Wolberg is not qualified to testify regarding whether a POSA would
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`have found the challenged claims obvious. The Wolberg Declaration is not
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`meaningful evidence for this additional reason.
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`C. Dr. Wolberg’s and Dr. Wilhelm’s reliance on each other
`invalidates Valeo’s assertion that a person of ordinary skill in the
`art would have been motivated to combine the references.
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`Another deficiency of the supporting declarations is that each declarant
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`relies on the other to assert that a POSA would have combined the references.
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`Valeo asserts that “it would have been obvious to combine Yamamoto, Mitsubishi,
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`and Lemelson, because a PHOSITA would have been motivated to enhance the
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`multi-camera vision system of Yamamoto to include the better handling of
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`overlapping regions, as taught by Mitsubishi, and to include the robust driver
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`assist/awareness features that Lemelson describes. See Exs. 1020 at ¶¶ 101-102;
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`Case IPR2015-01414
`Patent 8,643,724
`1022 at ¶¶ 82-89.” (Petition, p. 31.) Thus, Valeo cites to both the Wolberg and
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`Wilhelm Declarations to support its proposed combination of Yamamoto,
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`Mitsubishi, and Lemelson. (Id.) Dr. Wolberg and Dr. Wilhelm, however, do not
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`individually consider all the asserted references combined together.
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`Instead, Dr. Wolberg and Dr. Wilhelm divide the references and only
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`address selected references allegedly relevant to their respective fields. (See
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`Wolberg Decl. ¶ 97 (“My focus in this declaration is on prior art references
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`Yamamoto, Mitsubishi, Wang, Aishin, and Niles as they would have been
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`understood by a PHOSITA at the time of the earliest priority date for the ’724
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`patent.”); Wilhelm Decl. ¶ 80 (“I rely on Dr. Wolberg’s opinions regarding
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`teachings in certain prior art references and features within the challenged claims
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`that relate to the images that are obtained from the cameras and issues related to
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`image synthesis.”). Compare Wolberg Decl. ¶¶ 62-90 (only describing Yamamoto,
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`Mitsubishi, Aishin, Wang, and Niles) with Wilhelm Decl. ¶¶ 44-77 (only
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`describing Lemelson, Fuji, King, Conner, Schmidt, Paff, Otsuka, Sato, and
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`Goesch).)
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`Thus, while the declarants propose the same level of ordinary skill and assert
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`that they are both familiar with the POSA and were people of ordinary skill in the
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`art at the time the ’724 patent was filed, they are unwilling to opine on the full
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`scope of the claims. Dr. Wolberg and Dr. Wilhelm must rely on each other to
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`ould have POSA woconcludde that a P
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`Case IPPR2015-011414
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`Paatent 8,6433,724
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`ut this relirences, bucombinedd the refer
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`ance
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`undermmines the coonclusion.
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` 1.
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`Dr. Wollberg merrely assummes that
`mamoto a
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`combineed Lemelsoon with Yam
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`a POSAA would hhave
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`nd Mitsubbishi.
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`TThe cited poortion of thhe Wolber
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`g Declarattion only ddiscusses thhe combinaation
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`of Yammamoto andd Mitsubishhi and doess not discuuss or menttion Lemellson. (Wollberg
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`Decl. ¶¶¶ 101-02.)
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`In fact, Dr. Wolbergg does not,, using hiss own expeertise, opinne on
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`whetherr a POSA wwould havve combineed Lemelsoon with Yaamamoto aand Mitsubbishi.
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`Instead,, Dr. Woolberg merrely assummes that
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`a POSA
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`would haave combbined
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`Lemelsoon with Yaamamoto aand Mitsubbishi basedd on the te
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`(Id. at 994 (“Havinng reviewedd Yamamooto, Mitusbbishi [sic],
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`stimony off Dr. Wilhhelm.
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`and Lemeelson, baseed on
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`my expperience annd my revview of Drr. Wilhelmm’s declaraation, I asssume thatt the
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`PHOSITTA would
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`have beenn motivatedd to combiine these reeferences ffor the reaasons
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`discusseed in Dr. WWilhelm’s ddeclarationn.”).)
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`BBecause Drr. Wolbergg merely aassumes thhat a POSAA would hhave combbined
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`Lemelsoon with thhe other reeferences,
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`his ultimaate concluusion that tthe challennged
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`claims aare obvious is inapprropriate andd his testimmony shouuld be discoounted.
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` 2.
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`Dr. Willhelm merrely assummes that
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`combineed Yamamooto and MiMitsubishi.
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`a POSAA would hhave
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`SSimilarly, DDr. Wilhelmm opines oon combinning Lemellson with YYamamotoo and
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`Mitsubiishi based
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`only on DDr. Wolberrg’s opinioon that Yaamamoto aand Mitsubbishi
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`Case IPR2015-01414
`Patent 8,643,724
`would have been obvious to combine. (Wilhelm Decl. ¶ 81.) Thus, Dr. Wilhelm
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`does not, using his own expertise, opine on whether a POSA would have made the
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`whole combination. Instead, Dr. Wilhelm merely assumes that a POSA would have
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`combined Yamamoto and Mitsubishi based on Dr. Wolberg’s testimony.
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`For example, Dr. Wilhelm state that “[f]or purposes of this declaration, I
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`assume that Yamamoto and Mitsubishi also would have been obvious to combine
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`from the perspective of a PHOSITA at the time of the earliest priority date for the
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`’724 patent for the additional reasons more specifically discussed in Dr. Wolberg’s
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`declaration.” (Id.) Although Dr. Wilhelm uses the phrase “additional reasons” (id.),
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`he does not give reasons of his own and later merely states that “[t]he combination
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`of Yamamoto and Mitsubishi would have been obvious to a PHOSITA for the
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`reasons discussed in Dr. Wolberg’s declaration.” (Id. at 82.)
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`Dr. Wilhelm makes similar assumptions in other portions of his Declaration.
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`He “assume[s] based on [his] review of Dr. Wolberg’s declaration, that
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`Yamamoto, Mitsubishi, Wang, and Aishin, would have been combined for the
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`reasons set forth in Dr. Wolberg’s declaration.” (Id. at 153.) Because Dr. Wilhelm
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`merely assumes that a POSA would have combined Yamamoto and Mitsubishi, as
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`well as some of the other references, his ultimate conclusion that the challenged
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`claims are obvious is inappropriate and his testimony should be discounted.
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`Case IPPR2015-011414
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`Paatent 8,6433,724
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`to
`ach piecemeaal approa
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`thhe refereences
`the
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`POSA wwould noot have ccombined
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` 3.
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`The decclarants’
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`evidencees that a
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`referencees.
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`VValeo relies on testimmonial support from
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`Dr. Wolbeerg and D
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`r. Wilhelmm for
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`combining Yamaamoto, Miitsubishi,
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`and Lemeelson, butt Dr. Wollberg and
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`Dr.
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`Wilhelmm, in turn,
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`rely on eaach other.
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`Thus, neitther Dr. WWolberg noor Dr. Wilhhelm
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`opines tthat a POSSA would hhave madee the comb
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`ination of
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`referencess applied inn the
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`Petitionn, but insttead each
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`relies on
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`the assummption thaat a POSAA would hhave
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`combined some oof the refeerences. Thhis piecemmeal analyssis of the
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`motivationns to
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`combin
`e is not
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`sufficient. In short, their relliance on
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`each othher for ce
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`rtain
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`referencces evidennces that
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`a POSA
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`would nnot have ccombined
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`the dispaarate
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`referencces.
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`TThat Valeo includes ttestimoniall support ffrom purpoorted expeerts in diffeerent
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`fields inndicates thhat a POSAA i