Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: December 1, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRW AUTOMOTIVE US LLC,
`
`Petitioner,
`
`V.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`
`Case IPR2014-00869
`
`Patent 8,405,726 B2
`
`Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 C.F.R. §42.108
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`

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`IPR2014-00869
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`Patent 8,405,726 B2
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`I. INTRODUCTION
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`TRW Automotive US LLC (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1, 6, 7, 9—14, 16—18, 28—30, 33, 37—42, 45—49, 52—60, and
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`65 of US. Patent No. 8,405,726 B2 (“the ’726 patent”). Paper 1 (“Pet”). Patent
`Owner, Magna Electronics Inc. (“Patent Owner”), filed a Preliminary Response.
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`Paper 6 (“Prelim. Resp”). We have jurisdiction under 35 U.S.C. § 6(b)(4). We
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`review 'the Petition under 35 U.S.'C. § 314, which provides that an interpartes
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`review may not be instituted “unless .
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`.
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`there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition.”
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`Upon consideration of the Petition and Preliminary Response, we determine
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`that the information presented does not show that there is a reasonable likelihood
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`that Petitioner would prevail in establishing the unpatentability of any of the
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`challenged claims. Accordingly, we deny the Petition and do not institute an inter
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`partes review of the ’726 patent.
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`A. Related Proceedings
`TRW states that the ’726 patent is involved in a pending district court case,
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`titled Magna Electronics Inc. v. TRWAutomotive Holdings Corp, No. 1:13-cv-
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`00324 (W.D. Mich. 2013). Pet. 3.
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`B. The ’726 Patent
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`The ’726 patent is titled “Vehicle Accessory System.” Figure 6 from the
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`’726 patent, reproduced below, shows the basic components in one embodiment of
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`the disclosed accessory system. The accessory system in the ’726 patent attaches
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`to the interior of windshield 12 of a vehicle. Ex. 1002, Abstract. The system
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`includes a mounting element and module 10 for the accessory. 1d.
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`IPR2014—00869
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`Patent 8,405,726 B2
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`
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`Figure 6 is a side elevation of accessory module 10 mounted to
`windshield 12, with a rearview mirror mounted to the module.
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`A mounting element attaches to the windshield, and a module for an
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`accessory attaches to the mounting element. Id, Abstract. In all of the challenged
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`claims, the accessory is a camera. See, e. g., id. at‘col. 51, l. 41. The module
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`orients the field of View of the camera. 1d,, Abstract. In addition to a camera or
`other accessory, an interior rearview mirror assembly also may be attached to the
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`mounting element. Id.
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`In order to illustrate and describe the multiple disclosed
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`embodiments, the ’726 patent includes 68 drawings, many of which include
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`multiple sub—drawings, such as Figure 68, which has six sub-drawings labelled
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`68A—68F; and 51 columns of text. Petitioner directs us to Figures 66—68, which
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`Petitioner asserts are relevant to the challenged claims. Pet. 7—8. Figure 68A and
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`Figure 68B are reproduced below.
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`

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`IPR2014-00869
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`,
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`Patent 8,405,726 B2
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`2111
`
`
`
`Figure 68B
`Figure 68A
`Figures 68A and 68B are plan and perspective views,
`respectively, of accessory module 2110, accessory housing 2111,
`and mounting module 2110a.
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`As shown above, windshield mounted accessory module 2110 includes
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`mounting module 2110a, mounted or secured to an interior surface of a windshield
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`(not shown), and accessory housing 2111, mounted to mounting module 2110a.
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`Ex. 1002, col. 43, ll. 30—35. Accessory housing 2111 includes casing 2'111a and
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`cover plate 21 1 1b. Id at col. 43, 11. 35—36. Cover plate 2111b defines cavity
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`2113, which is recessed within casing 2111a. Id. at col. 43, 11. 48—49. Accessory
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`housing 2111 includes a camera or image sensor (not shown), which is pOSitioned
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`within housing 2111 and aligned with an aperture or opening in cavity 2113 of
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`cover plate 2111b. Id at col. 43, ll. 49—53. Independent claim 1 requires the
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`housing to have a wedge-shaped recess that tapers from the vehicle windshield. Id.
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`at col. 51, ll. 4549. Independent claims 28 and 40 require the recess in the
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`housing to taper, but do not require a wedge-shape. Id. at col. 54, 11. 33—37;
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`col. 56, 11. 49—53. Independent claims 33 and 47 require a recess, but do not
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`‘
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`specify the shape. Id. at col. 55, 11. 32—33; col. 57, 1]. 48—49. When assembled and
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`4
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`IPR2014-00869
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`Patent 8,405,726 B2
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`mounted at the windshield, the camera of accessory module housing 2111 is
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`oriented. in a generally horizontal position for viewing through aperture 2113a and
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`capturing an image occurring generally in front of the vehicle; Id. at col. 44,
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`11. 31—36.
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`C. Illustrative Claim
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`Among the challenged claims, claims 1, 28, 33, 40, and 47 are independent
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`claims. All of the challenged claims relate to “[a]n accessory system for a
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`vehicle.” See, e.g., Ex. 1002, col. 51, l. 20. Claim 1, reproduced below, is
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`illustrative of the claimed invention:
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`1. An accessory system for a vehicle,
`accessory system comprising:
`a mounting element;
`wherein a first side of said mounting element comprises an
`attachment portion for attachment of said mounting element at a
`vehicle windshield of a vehicle equipped with the accessory
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`said vehicular
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`system;
`wherein, at least when said mounting element is attached at
`the vehicle windshield, a module is mounted at a second side of
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`said mounting element that opposes said first side;
`wherein said module
`comprises
`a housing having a
`windshield-facing side that faces towards the vehicle windshield
`when said module is mounted at said second side of said
`
`mounting element attached at the vehicle windshield;
`wherein said housing of said module has a cabin-facing side
`that faces away from the vehicle windshield towards the interior
`cabin of the equipped vehicle when said module is mounted at
`said second side of said mounting element attached at the vehicle
`windshield;
`wherein a camera is disposed in said housing between said
`windshield—facing side of said housing and said cabin—facing side
`of said housing;
`wherein said camera comprises an imager and a lens;
`wherein said windshield-facing side of
`said housing
`comprises a generally wedge-shaped recess:
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`IPR2014-OO869
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`Patent 8,405,726 B2
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`.
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`‘
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`said mounting
`wherein, with said module mounted at
`element attached at the vehicle windshield, said wedge-shaped
`recess tapers from the vehicle windshield; and
`wherein said camera, With said module mounted at said
`mounting element attached at
`the vehicle windshield, views
`through the vehicle windshield via said wedge-shaped recess.
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`D. References Relied Upon
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`Petitioner relies upon the following prior art references:
`
`Reference
`
`’
`
`'
`
`L
`
`'
`
`,, Exhibit Number
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`
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`U. S.'Pat. No. 6,,066933
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`US. Pat. No. 5,096,287
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`US. Pat. No. 6,392,218
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`US. Pat. No. 5,576,687
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`E. The Asserted Grounds
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`' Petitioner asserts the following grounds of unpatentability under 35 U.S.C.
`
`§ 103:
`
`
`Claim(s) Challengedj _tatutoryBasis
`References,
`1, 6, 7,9-14, 17, 0108,
`§1-03(a) Ponziana
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`'
`
`i
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`0
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`Kuehnle 16, 42, and 49
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`28—30, 33, 3741,
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`45—48, 52—60, and 65
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`§ 103(a)
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`-
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`Kakinami
`
`Ponziana
`Kakinami
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`Kuehnle
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`Blank
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`II. ANALYSIS
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`A. Real Parties In Interest
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`In accordance with 37 C.F.R. § 42.8(b)(1), Petitioner identified “TRW
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`IPR2014-00869
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`Patent 8,405,726 BZ
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`Automotive U.S. LLC of Farmington Hills, Michigan” as the sole real party in
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`interest. Pet. 2.
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`I Patent Owner asserts that Petitioner has “has made statements that call into
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`question the true identities” of the real parties in interest, as required by
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`35 U.S.C. § 312(a)(2). Prelim. Resp. 7. According to Patent Owner, Petitioner
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`“muddies the issue” by identifying “TRW Automotive Holdings Corp.” and “TRW
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`Vehicle Safety Systems Inc.” as co-defendants in the related litigation identified by
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`Petitioner and cited in Section I (A), above. Patent Owner also asserts that TRW
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`Automotive Holdings Corp. is the ultimate parent corporation of Petitioner TRW
`Automotive US LLC and “undoubtedly exhibits a significant measure of control
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`over TRW Automotive U.S. LLC.” Id. According to Patent Owner, the fact that
`the Annual Report of Petitioner’s parent corporation discusses Petitioner’s
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`financial position and operating results “suggests a tight financial integration”
`between the two companies. Id. _at 8. Patent Owner fails to state, however,
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`whether it is arguing that both TRW Automotive Holdings Corp. and TRW
`Vehicle Safety Systems Inc. are real parties in interest, or whether it is arguing that
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`only Petitioner’s parent company, TRW Automotive Holdings Corp., is a real party
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`in interest. We address below the merits of Patent Owner’s assertions for both
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`companies.
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`A petition for inter partes review may be considered only if, inter alia, “the
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`petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office
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`Patent Trial Practice Guide provides guidance regarding factors to consider in
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`determining whether a party is a real party in interest. 77 Fed. Reg. 48,756,
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`48,759—48,760 (Aug. 14, 2012). Considerations may include whether a non-party
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`“funds and directs and controls” an IPR petition or proceeding. Id. at 48,760.
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`Additional relevant factors include: the non-party’s relationship with the petitioner;
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`IPR2014-00869
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`Patent 8,405,726 B2
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`the non-party’s relationship to the petition itself, including the nature and/or degree
`of involvement in the filing; and the nature of the entity filing the petition. Id. ‘
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`Generally a party does not become a “real party—in-interest” merely through
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`association with another partyin an unrelated endeavor. Id. A party also is not
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`considered a real party in interest in an inter partes review solely because it is a
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`joint defendant with a Petitioner in a patent infringement suit or is part of a joint
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`defense group with a Petitioner in the suit. Id.
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`Whether a non-party is a “real party-in—interest” to an inter partes review
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`proceeding “is ahighly fact-dependent question.” Id at 48,759. There is no
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`“bright line test.” Id. Courts invoke the term “real party-in-interest” to describe
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`relationships and considerations sufficient to justify applying conventional
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`principles of estoppel and preclusion. Id.
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`\ The non-party’s participation with a Petitioner may be overt or covert, and
`the evidence may be direct or circumstantial, but the evidence as a whole must
`show that the non-party possessed effectiVecontrol over the Petitioner from a
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`practical standpoint. Zoll Lifecor Corp. v. Philips Electronics North America
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`Corp, IPR2013-00609, Paper 15, 10 (PTAB March 20, 2014). Accordingly, we
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`look to the evidence on which Patent Owner relies to determine the fact dependent
`issue of whether TRW Automotive Holdings Corp. and TRW Vehicle Safety
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`Systems Inc. are real parties in interest in this proceeding.
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`Patent Owner speculates (Prelim. Resp. 7—8) about what the evidence
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`“undoubtedly exhibits” or “suggests” concerning the relationship of Petitioner to
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`its parent corporation, TRW Automotive Holdings Corp. This speculation is based
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`on general evidence of a parent/subsidiary relationship in a required Annual Report
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`(Form 10-K) submitted to the US. Securities and Exchange Commission
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`(Ex. 2002). The fact the this Annual Report states generally that the parent
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`IPR2014-00869
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`Patent 8,405,726 B2
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`company “conduct[s] substantially all of [its] operations through subsidiaries”
`(Ex. 2002, 2) is not persuasive or sufficient evidence to establish “an involved and
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`controlling parent corporation representing the unified interests of itself and
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`Petitioner,”as found in Zoll. IPR2013-00609, Paper 15, 12.
`In RPX Corp. v. Virnetx, Ina, IPR2014-00171, Paper 52 (PTAB June 23,
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`2014),1 the Board discussed a number of factors to determine whether the
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`petitioner RPX was a proxy for a non-party. Those factors include whether the
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`petitioner is compensated by the non-party for filing the petition; whether the
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`petitioner was authorized, explicitly or implicitly, by the non—party to file the
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`petition or to represent the non-party in the inter partes review; and whether the
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`petitioner is a “nominal plaintiff" with “no substantial interest” in the IPR
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`challenge. Id. at 7—10. Unlike the facts in RPX, based on the record before us,
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`there is no persuasive evidence that Petitioner is acting as a proxy for TRW
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`Automotive Holdings Corp.
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`Patent Owner has not directed us to any evidence establishing a real party in
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`interest relationship between Petitioner and TRW Vehicle Safety Systems Inc.
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`other than Petitioner’s identification of the company as “related” and as a co-
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`‘
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`defendant in a lawsuit. In Denso Corp. v. Beacbn Navigation GmbH, IPR2013-
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`00026, Paper No. 34, 10—11 (PTAB March 14, 2014), the Board determined that
`the mere fact that parties are co—defendants or concurrent defendants in litigation
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`does not make them real parties in interest. In Denso, as here, there was no
`persuasive evidence that the non-party engaged in strategic planning, preparation,
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`and review of the inter partes review petition. Patent Owner’s speculation
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`1 In RPX, the parties submitted a proposed redacted version (Paper 52) of the
`Board’s decision. In Paper 53, the Board entered the redacted decision and ordered
`that the redacted decision (Paper 52) would be available to the public.
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`IPR2014-00869
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`Patent 8,405,726 B2
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`suggesting that TRW Vehicle Safety Systems Inc. is a real party in interest in this
`proceeding has no persuasiveevidentiary support.
`'
`’
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`Petitioner’s identification of the two other TRW entities as “related to
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`Petitioner” (Pet. 3) does not contradict Petitioner’s identification of the sole real
`party in interest in this proceeding. Patent Owner’s speculation about the motives
`of Petitioner, i.e., that Petitioner “appears to be. attempting to‘evade the estoppel
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`effect” (Prelim. Resp. 8), also is unpersuasive.
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`ACcordingly, based on the evidence before us, Patent Owner fails to
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`establish that either TRW Automotive Holdings Corp. or TRW Vehicle Safety
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`Systems Inc. is a real party in interest in this proceeding.
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`'
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`B. Statutory Bar Under 35 US. C. ' § 315(a)(1)
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`Patent Owner asserts that the Petition is barred under 35 U.S.C. § 315(a)(1)
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`\ based on a counterclaim filed in related litigation. Prelim. Resp. 13—15.
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`Based on Patent Owner’s assertiOns in the Preliminary Response,2 Patent
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`Owner filed a complaint in March 2013 against Petitioner but never served the
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`complaint. Prelim. Resp. 13. Before any complaint was served, Petitioner filed an
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`Answer, which included a Counterclaim, asserting invalidity of the ’726 patent.
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`Id. According to Patent Owner, Petitioner filed its Petition in this proceeding after
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`it filed its Answer and Counterclaim. Id.
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`2 In the entire discussion of the asserted bar under Section 315(a)(1), Patent Owner
`does not cite to a single document or other evidence in support of its position.
`Patent Owner refers to “the complaint of March 2013” (Prelim. Resp. 13), but no
`such complaint is of record in this proceeding. We are aware that Patent Owner
`filed an Exhibit 2001 in this proceeding, which is an Answer and Counterclaim in a
`suit between the parties, but the Preliminary Response does cite to this Exhibit. It
`is Patent Owner’s responsibility to explain specific evidence that supports its
`arguments, not the Board’s responsibility to search the record and piece together
`evidence that may support Patent Owner’s arguments.
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`IPR2014—00869 '
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`Patent 8,405,726 B2
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`Based on these asserted facts, Patent Owner argues that the so-called
`“counterclaim” was really the firstfiled and served document in the litigation
`between the parties, and, according to Patent Owner, it is this ,“counterclaim” that
`initiated the law suit. Id at 14. Patent Owner argues the so-called “counterclaim”
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`should be considered the beginning of a civil action challenging the validity of the
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`patent, thus barring a subsequent petition under Section 315(a)(1). Id.
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`Section 315(a)(1) states that “[a]n inter partes review may not be instituted
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`if, before the date on which the petition for such a review is filed, the petitioner or
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`real party in interest filed a civil action challenging the validity of a claim of the
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`patent.” Section 315(a)(3), however, provides a specific exemption for a
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`counterclaim. Section 315(a)(3) states that “[a] counterclaim challenging the
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`validity of a claim of a patent does not constitute a civil action challenging the
`validity of a claim of a patent for purposes of this subsection.” Thus, the iSSue
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`presented is whether the counterclaim filed by Petitioner is a “civil action,” under
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`§ 315(a)(1 ), or whether it is a counterclaim under § 315(a)(3).
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`Petitioner cites the related proceeding of Magna Electronics Inc. v TRW
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`Automotive Holdings Corp, Case 1:13-cv-00324 (W.D. Mich.) Pet. 3. Exhibit
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`2001 submitted in this proceeding by Patent Owner is an Answer, including'a .
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`Counterclaim, from this same case. According to the publicly available docket
`Sheet from the court’s PACER records for this case, the complaint was filed on
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`March 26, 2013, and an Answer and Counterclaim were filed on May 31, 2013.
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`Ex. 3001, 6. The case then proceeded in normal fashion based on a complaint and
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`Answer with a counterclaim. Neither the caption of the case nor the case number
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`was changed because the named defendants filed an Answer and Counterclaim
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`before the complaint was served. A first amended complaint was filed on June 21,
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`2013. Id. A Joint Status Report was filed on July 11, 2013 identifying Magna
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`11
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`IPR2014—00869
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`Patent 8,405,726 B2
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`Electronics, Inc. as “Plaintiff” and identifying the TRW entities as “Defendant.”
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`Ex. 3002, 1. The Joint Status Report also refers to the “counterclaims” asserted by
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`the TRW entities. Id. Thus, the court and the plaintiff treated the Answer and
`Counterclaim as a counterclaim. Based on the evidence of record, there is no bar
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`because a counterclaim is not a civil action pursuant to § 315(a)(3).
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`C. Claim} Construction
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`In an inter partes review, “[a] claim in an unexpired patent shall be given its
`broadest reasonable construction in light of the specification of the patent in which
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`it appears.” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,764, 48,766 (Aug. 14, 2012) (Claim Construction); In re
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`Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[W]hen
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`interpreting a claim, words of the claim are generally given their ordinary and
`accustomed meaning, unless it appears from the specification or the file history
`that they were used differently by the inventor.” In re Paulsen, 30 F .3d 1475, 1480
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`(Fed. Cir. 1994). Any special definition for a claim term must be set forth in the
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`specification with reasonable clarity, deliberateneSs, and precision. Id.
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`'
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`Cooling Means
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`Petitioner proposes a specific construction for the phrase “cooling means to
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`assist in cooling at least one electronic component housed in said housing,” which
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`appears in claim 14. Pet. 5. Petitioner aS‘Serts that this phrase is a means-plus-
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`function limitation and should be construed to cover the corresponding structure
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`that is described in the Specification and equivalents thereof. Id, citing
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`35 U.S.C. § 112 11 6. According to Petitioner, this phase is limited to the structure
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`of “a ventilation element, such as an air passage between the interior surface of the
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`windshield and the component, or a surface of the component, near the
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`windshield,” as described in the ’726 Patent. 151., citing Ex. 1002, col. 13, ll. 29—
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`38.3
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`Patent Owner agrees that the “cooling means” termiis construed under
`35 U.S.C. § 112 1] 6, but asserts that the structure disclosed in the Specification is
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`“an air passage” and equivalents thereof. Prelim. Resp. 21—22, citing Ex. 1002,
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`col. 13, ll. 29—55.
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`Section 112, 1] 6 allows a patentee to express a claim limitation as “a means
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`or step for performing a specified function without the recital of structure, material,
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`or acts in support thereof.” Section 112, 1] 6 also provides that claim limitations
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`expressed in this manner “shall be construed to cover the corresponding structure,
`material, or acts described in the specification and equivalents thereof.” The use of
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`the term “means,” as in claim 14 of the ’726 patent, triggers a rebuttable
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`presumption that § 112, 1] 6 governs the construction of the claim term. Inventio
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`AG v. ThyssenKrupp Elevator Americas Corp.,.649 F.3d 1350, 1356 (Fed. Cir.
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`2011). Here, it is clear that § 112, 1] 6 governs. We construe the function of a
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`means-plus-function limitation to include the limitations contained in the claim
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`language, and only those limitations. Cardiac Pacemakers, Inc. v. St. Jude Med,
`Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). The function recited in claim 14 is “to
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`assist in cooling at least one electronic component housed in said housing.”
`The structure disclosed in the written description of the specifiCation is the
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`corresponding structure only if the written description of the specification or the
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`prosecution history clearly links, or associates, that structure to the function recited
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`3 Petitioner’s assertion is in accord with 37 CPR. § 42.104(b)(3) (“Where the
`claim to be construed contains a means-plus—function or step—plus-function
`limitation as permitted under 35 U.S.C. § 112(f), the construction of the claim must
`identify the specific portions of the specification that describe the structure,
`material, or acts corresponding to each claimed function”)
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`Patent 8,405,726 B2
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`in a means-plus-function claim limitation. B. Braun Med, Inc. v. Abbott Labs.,
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`124 F.3d 1419, 1424 (Fed. Cir. 1997). Reviewing the Specification, we find clear
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`and unambiguous reference to the structure for the “cooling means.”
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`The ’726 patent discloses that it may be desirable to provide a ventilation
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`element, such as a ventilation passage or air passage, between the interior surface
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`of the windshield and the component or a surface of the component closest to the
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`windshield, in order to cool the accessory using air flowing through the passage.
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`Ex. 1002, col. 13, 11. 29—35. The Specification then states that “the accessory
`module of the present invention may include such a passageway along the
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`interfacing surface against the windshield.” Id. at col. 13, 11. 35—39. Thus, the
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`structure disclosed to assist in cooling at least one electronic component housed in
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`the housing is a passageway in the accessory module along the interfacing surface
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`of the accessory module against the windshield.
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`The Specification also describes additional, optional structures that may
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`assist in Cooling, such as fins on the surface of the accessory module or a fan. Ex.
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`1002, cc]. 13, 11. 37—48. Structural limitations from the written description that are
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`unnecessary to perform the claimed function, however, cannot be imported into the
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`claim. Welker Bearing Co. v. PhD, Inc., 550 F.3d 1090, 1097 (Fed. Cir. 2008)
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`(citing Wenger Mfg, Inc. v. Coating Mach. Sys., Inc, 239 F.3d 1225, 1233 (Fed.
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`Cir. 2001)). Thus, these optional structures, which are not necessary to perform
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`the claimed function, are not part of the structure in claim 14.
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`Accordingly, for purposes of this Decision, and based on the record before
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`us, the structure corresponding to the “cooling means” in claim 14 is a passageway
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`in the accessory module along the interfacing surface of the accessory module
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`' against the windshield, and its equivalents.
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`14
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`IPR2014—00869 .
`Patent 8,405,726 B2
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`“Imager”
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`Petitioner proposes that the claim term “imager,” which appears in all the
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`, challenged claims,4 should be construed to mean “a video camera, CMOS imaging
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`array sensor, CCD sensor, or the like, with or without a lens, which may be a
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`separate element.” Pet. 6. We note that the ’726 patent refers to an “image sensor
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`or camera (preferably a video camera, such as a CMOS imaging array sensor, a
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`CCD sensor or the like, such as the types disclosed in commonly assigned, US.
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`Pat. Nos. 5,550,677; 6,097,023 and 5,796,094, which are hereby incorporated
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`herein by reference)” Ex. 1002, col. 12, 11. 37—42.
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`Patent Owner asserts that Petitioner’s proposed construction violates “the
`broadest reasonable construction rubric and the doctrine of claim differentiation.”
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`Prelim. Resp. 4. According to Petitioner, “the claimed imager of the ’726 patent
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`must be distinct from a lens.” Id. at 22.
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`We have considered Petitioner’s and Patent Owner’s proposed constructions
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`but determine that no express construction of the term “imager” is necessary for
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`purposes of this Decision.
`D. Asserted Groana’s 0f Unpatentability
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`1. Obvioasness Based on Ponziana, Kakinami, and Kuehnle
`Petitioner asserts that “[c]laims 1, 6-7, 9-14, 17-18, 28—30, 33, 37-41, 45-48,
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`52-60, and 65 are invalid and unpatentable under 35 U.S.C. 103(a) as obvious over
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`Ponziana (Ex. 1004) in view of Kakinami (Ex. 1005) and Kuehnle (Ex. 1006).”
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`Pet. 11 (emphasis added). Thus, Petitioner appears to assert a single ground of
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`unpatentability based on the combination of all three referenCes against all the
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`4 See, e.g., claim 1, which includes the limitation “wherein said camera comprises
`an imager and a lens.” Ex. 1002, col. 51, l. 44.
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`IPR2014-00869
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`Patent 8,405,726 B2
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`challenged claims.5 Petitioner states that “[t]he primary reference is Ponziana,”
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`which, according to Petitioner, “contains all of the limitations in each claim, except
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`for certain details of the recess in the housing, which is nevertheless suggested by
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`Ponziana, but not expressly taught.” Id. at 12. Petitioner also asserts, however,
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`that the “housing recess shape limitations” are “clearly met” by Kakinami “and/0r”
`Kuehnle. Id. (emphasis added).6 Here, Petitioner appears to be asserting three
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`different grounds of unpatentability, based on either two or three references:
`(1) Ponziana, Kakinami, and Kuehnle; or (2) Ponziana and Kakinami; or
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`(3) Ponziana and Kuehnle. Based on the ambiguous and inconsistent identification
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`of the references and application of the references to the challenged claims, it is
`uncertain how the challenged claims are unpatentable in light of the references, as '
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`‘
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`required by 37 CPR. §42.104(b)(3), (4).
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`a. Ponziana
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`Petitioner states that Ponziana is the “primary reference” (Pet. 12), so we
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`begin with an analysis of Ponziana. According to Petitioner, “Ponziana contains,
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`all of the limitations in each claim, except for certain details of the recess in the
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`housing, which is nevertheless suggested by Ponziana, but not expressly taught.”
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`Id. Petitioner admits that Ponziana does not expressly describe the shape of the
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`recess in which the sensor sits.” Id.
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`Ponziana discloses a rain‘sensing system. Ex. 1004, col. 1, -11. 8—14. The
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`general structure of the system is shown in Figure 3 from Ponziana, which is
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`5 See also, e. g., Petitioner’s discussion of independent claim 33, stating that “[i]n
`summary, Ponziana discloses, in combination with Kakinami and Kuehnle, all of
`the limitations from claim 33 of the ‘726 Patent.” Pet. 41 (emphasis added).
`6 See also, e. g., Petitioner’s further discussion of independent claim 33, stating that
`“claim 33 is not inventive over the prior art forward-facing camera modules taught
`by Ponziana, Kakinami, and/0r Kuehn.” Pet. 41 (emphasis added).
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`16
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`IPR2014-00869
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`.
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`Patent 8,405,726 B2
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`reproduced below.
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`
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`Figure 3 from Ponziana is a fragmentary sectional view showing
`rain sensor 24 mounted on mirror mount 26
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`As shown in Figure 3, sensor 24 is mounted on a first mounting structure 26,
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`which, in turn, is adhered to inner surfaCe 15b of windshield 15 using a suitable
`adhesive 28. Ex. 1004, col. 3, 11. 9—13. While the Ponziana disclosure is directed
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`to a rain sensor, Ponziana states that a “CCD camera”7 may be provided as the
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`sensor 24. Id. at col. 3, 11. 65—67.
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`Sensor 24 includes a housing 30. Id. at col. 3, 11. 14—15. Inside the housing
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`is sensor circuit board 38, which includes a plurality of optical sensors 40. Id. at
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`col. 3, 11. 24—26. As shown in Figure 3, circuit board 38 is mounted directly within I
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`housing 30 using suitable screws or fasteners 37.
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`Housing 30 includes a first side 31 (see Figure 4) having an angled wall 30a,
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`which defines first mounting area 32 for receiving mounting structure 26. Id. at
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`col. 3, .11. 17—20. Housing 30 also includes second side 33 (see Figure 4). defining
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`7 As explained in Patent No. 6,097,023, (Ex. 3003), incorporated by reference into
`the ’726 patent (Ex. 1002, col. 12, 11. 37—42), a photosensing array may be a charge
`couple device (CCD) array of the type commonly utilized in video camcorders and
`the like. Ex. 3003, col. 8, 11. 40—42.
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`second angled wall 30b, which defines second mounting area 348 for receiving and
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`supporting base 36a of a mirror 36. Id. at col. 3, 11. 20—23. As shown in Figure 3
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`and as described in Ponziana, mounting area 32 and mounting area 34 define a
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`generally trapezoidal or dove tail shape, which connect sensor 24 to windshield 15
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`and connect mirror 36 on sensor 24, respectively. Id. at col. 4, 11. 25—28.
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`b. Kakinami _
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`‘ As shown below in Figure 2a from Kakinami, Kakinami discloses a video
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`camera mounted to an arm, which also supports the rear view mirror.
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`
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`19
`14 15 16,
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`18
`20
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`Figure 2a is a cross—sectional View of mounted camera.
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`8 In some places, Ponziana uses reference numeral 30 to refer to both the housing
`(see, e. g., Ex. 1004, col. 3, ll. 15, 17, 20) and a second mounting area (see, e. g, id.
`at col. 4, 11. 15—16, 19, 21). Ponziana, however, initially refers to the second '
`mounting area with-reference numeral 34 (see id. at col. 3, l. 22), which appears to
`be the correct designation to avoid confusion with and redundancy with housing
`30.
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`18
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`Patent 8,405,726 B2
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`As shown above, Video camera 20 is mounted in arm 11, which also
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`supports rear View mirror 1. Ex. 1005, col. 2, 11. 15—16. Passage 12 in arm 11 is a
`passageway for electric cables-connected to Video camera 20. Id. at col. 2, ll. 17—
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`19. Arm 11 also includes passage 13 for air. Id. The end portion of passage 12
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`towards front windshield 3 has a diameter large enough to accommodate Video
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`camera 20. Id. at col. 22—24.
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`Air passage 13 opens into boot 18. Id. at col. 2, 11. 36—37. Air passage 13 is
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`directed towards front windshield 3. Id. at col. 2, 11. 37—38. One end of boot 18 is
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`connected to arm 11 and the other end of boot 18 is pressed against windshield 3 to
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`thereby define a closed chamber with the windshield 3 so the Video camera 20 is
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`isolated from both the outside atmosphere and the inside atmosphere of the
`automobile. 1d. at col. 2, 11. 39—44.
`A
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`c. Kuehnle
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`As shown in Figure 2 from Kuehnle, reproduced below, Kuehnle discloses a
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`rain sensor. Ex. 1006, col. 2, l. 64—col. 3, l. 4.
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` F/G. 2 ~
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`FIG. 2 is an assembly View of a rain sensor.
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`Patent 8,405,726 B2
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`Sensor 20 is intended to be mounted near the upper, inner portion of a
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`vehicle’s windshield. Id. Optical detector 23 is enclosed by front housing member
`21 and back housing member 25. Id. at col. 3, ll. 8*9.
`-
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`Kuehnle is relevant to the issues raised by Petitioner in this proceeding
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`primarily because of the shape of the housing, as discussed further below.
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`d. The Challenged Independent Claims
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`Against the background discussed above, we turn to the issue before us,
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`which is whether the information presented in the Petition and the Preliminary
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`Response shows that there is a reasonable likelihood that the Petitioner would
`prevail with respect to at least one of the claims challenged in the Petition.
`Independent claim 1 requires the housing to have a generally wedge-shaped.
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`tapered recess, with the camera viewing through the windshield via the recess.
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`Independent claims 28 and 40 require the housing to have a tapered recess through
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`which the camera views. Independent claims 33 and 47 require the housing to
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`have a recess through which the camera views. While this recess and its shape
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`have become the claim element on which the parties have focused their attention in
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`this proceeding,9 the ’726 patent disclosure does not emphasize this element. The
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`parties have not directed us to a discussion in the Specification or to a particular
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`reference numeral that identifies this recess. During prosecution ofthe application
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`maturing into the ’726 patent, the Applicant stated that support for the recess and
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`its