Cited
`As of: October 16, 2015 5:23 PM EDT
`
`In re Magna Elecs., Inc.
`
`United States Court of Appeals for the Federal Circuit
`
`May 7, 2015, Decided
`
`2014-1798, 2014-1801
`
`Reporter
`
`611 Fed. Appx. 969; 2015 U.S. App. LEXIS 7521
`IN RE: MAGNA ELECTRONICS, INC., Appellant
`
`Notice: THIS
`AS
`ISSUED
`DECISION WAS
`UNPUBLISHED OR NONPRECEDENTIAL AND MAY
`NOT BE CITED AS PRECEDENT. PLEASE REFER TO
`FEDERAL RULES OF APPELLATE PROCEDURE RULE
`32.1 GOVERNING THE CITATION TO UNPUBLISHED
`OPINIONS.
`
`Prior History: [**1] Appeal from the United States Patent
`and Trademark Office, Patent Trial and Appeal Board in No.
`90/011,478.
`
`vehicle.
`
`Outcome
`
`Decisions affirmed.
`
`LexisNexis® Headnotes
`
`
`Patent Law > Jurisdiction & Review > Standards of
`Review > Substantial Evidence
`
`Patent Law > Jurisdiction & Review > Standards of Review > De
`Novo Review
`
`Appeal from the United States Patent and Trademark Office,
`Patent Trial and Appeal Board in No. 90/011,477.
`
`Patent Law > US Patent & Trademark Office
`Proceedings > Appeals
`
`Disposition: AFFIRMED.
`
`Core Terms
`
`patent, camera, horizontal, distance, display, teaches, lines,
`graphic, comprises, vehicular, overlay, nonobviousness,
`capture, objects,
`rejected claim,
`imaging,
`invention,
`secondary,
`nexus,
`substantial
`evidence,
`ex
`parte,
`superimposed, unpersuasive, rearward, gear
`
`Case Summary
`
`
`Overview
`
`HOLDINGS: [1]-A patent directed to vehicular rearview
`vision systems utilizing an image capture device was invalid
`as obvious since replacing a camera disclosed in prior patent
`applications with another type of camera disclosed in a
`publication was a mere substitution of one element for
`another known in the field which achieved a predictable
`result; [2]-The claimed invention utilizing a display system
`which used horizontal lines to generate a specific distance
`measurement between objects behind the vehicle was obvious
`in view of prior patent applications which used horizontal
`lines to indicate the relative positions of objects behind the
`
`HN1 A court reviews the Patent Trial and Appeal Board's
`legal conclusions de novo, and the Board's factual findings
`underlying those determinations for substantial evidence.
`Substantial evidence means such relevant evidence as a
`reasonable mind might accept as adequate to support a
`conclusion.
`
`Patent Law > Nonobviousness > Elements & Tests > Prior Art
`
`Patent Law > Nonobviousness > Elements &
`Tests > Predictability
`
`HN2 An explicit teaching, suggestion, or motivation is not
`necessary to support a conclusion of obviousness of a patent.
`Obviousness is a flexible inquiry, and a court is tasked with
`determining whether a claimed improvement is more than the
`predictable use of prior art elements according to their
`established functions.
`
`Counsel: TERENCE J. LINN, Gardner, Linn, Burkhart &
`Flory, LLP, Grand Rapids, MI, for appellant.
`
`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.
`
`
`
`Sierra Wireless America, Inc., Sierra Wireless, Inc. and RPX Corp. Exh. 1123 p. 1
`
`

`
`In re Magna Elecs., Inc.
`
`Page 2 of 5
`
`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. [**3] 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, 2014 Pat. App. LEXIS 3228, [WL] 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. 2014 Pat. App. LEXIS 3228, [WL]
`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 [**4] 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.
`2014 Pat. App. LEXIS 3228, [WL] 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. 2014 Pat. App. LEXIS 3228, [WL]
`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
`whether CMOS camera-based vehicular vision systems could
`be manufactured; and (3) any unexpected results. Id.
`B
`
`Judges: Before PROST, Chief Judge, LOURIE and CHEN,
`Circuit Judges.
`
`Opinion
`
`
` [*970] 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
`1
` Ex parte Magna
`obvious under 35 U.S.C. § 103(a) (2006).
`
`Elecs., Inc., No. 2013-004164, 2014 Pat. App. LEXIS 3228,
`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
`Pat. App. LEXIS 3377, 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
`
`imaging array and wherein said
`a pixelated
`pixelated array comprises a CMOS imaging array;
`
`
`
`1 Because the applications of the '447 and '331 patents were filed
`before March 16, 2013, [**2] the pre-Leahy-Smith America Invents
`Act version of § 103 applies. See Pub L. No. 112-29, 125 Stat. 284
`(2011).
`
`
`
`
`
`
`
`Sierra Wireless America, Inc., Sierra Wireless, Inc. and RPX Corp. Exh. 1123 p. 2
`
`

`
`In re Magna Elecs., Inc.
`
`Page 3 of 5
`
`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. 2014 Pat. App. LEXIS
`3377, [WL] 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.
`2014 Pat. App. LEXIS 3377, [WL] at *4. Last, the [**7]
`Board found that Magna failed to provide adequate evidence
`of secondary considerations of nonobviousness. 2014 Pat.
`App. LEXIS 3377, [WL] at *4-5.
`
`Magna timely appealed from both decisions, and we have
`jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
`
`Discussion
`
`HN1 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 PTO
`did not establish a prima facie case of obviousness because
`Wang does not teach, suggest, or motivate the use of CMOS
`in vehicular vision systems. Instead, Magna
`cameras
`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 [**8]
`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
`
`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 [**5]
`comprising a visual prompt per-spectively 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 [**6]
`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, 2014 Pat. App. LEXIS 3377, [WL] 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."
`2014 Pat. App. LEXIS 3377, [WL] at *2 (referring to '331
`
`
`
`
`
`
`
`Sierra Wireless America, Inc., Sierra Wireless, Inc. and RPX Corp. Exh. 1123 p. 3
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`

`
`In re Magna Elecs., Inc.
`
`Page 4 of 5
`
`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, 2014 Pat. App. LEXIS 3228, [WL] at
`*2. [*973] HN2 Nonetheless, an explicit teaching, suggestion,
`or motivation is not necessary to support a conclusion of
`obviousness. [**9] 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.
`
`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, 2014 Pat. App. LEXIS 3228,
`[WL] at *2 (referring to KSR, 550 U.S. at 415-16). 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. We find Magna's
`arguments to the contrary unpersuasive.
`
`Substantial evidence also supports the Board's finding that
`Magna lacks sufficient evidence to show nonobviousness.
`With respect to Magna's commercial success argument, for
`example, the Board correctly found that Magna fails to relate
`its alleged 35% [**10] 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, 2014 Pat. App.
`LEXIS 3228, [WL] 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."). [**11]
`
`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 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
`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 [**12] 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
`
`
`
`
`
`
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`Sierra Wireless America, Inc., Sierra Wireless, Inc. and RPX Corp. Exh. 1123 p. 4
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`

`
`In re Magna Elecs., Inc.
`
`Page 5 of 5
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`obvious. Even so, as the Board found, JP '889 conceives of
`providing numerical indicators. Decision II, 2014 Pat. App.
`LEXIS 3377, [WL] 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." [**13] 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
`
`
`
`End of Document
`
`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 [**14] 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
`
`
`
`
`
`
`
`Sierra Wireless America, Inc., Sierra Wireless, Inc. and RPX Corp. Exh. 1123 p. 5