Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: December 7, 2015
`
`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;
`I
`and CONNAUGHT ELECTRONICS LTD.,
`Petitioner,
`
`V.
`
`MAGNA ELECTRONICS, INC.,
`Patent Owner.
`
`Case IPR2015-01415
`
`Patent 8,543,330 B2
`
`Before RICHARD E. RICE, JAIVIES A. TARTAL, and
`
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`Paper 10
`Entered: December 7, 2015
`
`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;
`I
`and CONNAUGHT ELECTRONICS LTD.,
`Petitioner,
`
`V.
`
`MAGNA ELECTRONICS, INC.,
`Patent Owner.
`
`Case IPR2015-01415
`
`Patent 8,543,330 B2
`
`Before RICHARD E. RICE, JAIVIES A. TARTAL, and
`
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 B2
`
`Petitioner, Valeo North America, Inc., Valeo S.A., Valeo GmbH,
`
`Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd., filed a
`
`corrected Petition requesting an inter partes review of claims 8, 11, 12, 16,
`
`17, 19—21, 28, 31—38, 42, 50, 51, 53, 54, 62, 70, 71, 73, 74, 79, and 84 of
`
`US. Patent No. 8,543,330 B2 (“the ’330 patent”). Paper 7 (“Pet”). Patent
`
`Owner, Magna Electronics, Inc., filed a Preliminary Response. Paper 9
`
`(“Prelim Resp”). We have jurisdiction under 35 U.S.C. § 314(a), which
`
`provides that an inter partes review may not be instituted “unless .
`
`.
`
`. the
`
`information presented in the petition .
`
`.
`
`. shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.”
`
`Petitioner previously sought institution of an inter partes review of
`
`claims 1~89 of the ’330 patent. Valeo North America, Inc, Valeo S.A.,
`
`Valeo GmbI-I, Valeo Schalter und Sensoren GmbH, and Connaught
`
`Electronics Ltd. v. Magna Electronics, Inc., Case IPR2015-00250
`
`(“IPR2015-00250”), Paper 1(“the 250-Petition”). We instituted trial in
`
`IPR2015-00250 on claims 1—7, 9, 10, 13—15, 18, 22—27, 29, 30, 39—41,43—
`
`49, 52, 55—61, 63—69, 72, 75—78, 80—83, and 85—89 ofthe ’330 patent, but
`
`further determined that the information presented by Petitioner failed to
`
`demonstrate a reasonable likelihood that Petitioner would prevail in showing
`
`the unpatentability of claims 8, 11, 12, 16, 17, 19—21, 28, 31—38, 42, 50,51,
`
`53, 54, 62, 70, 71, 73, 74, 79, and 84. IPR2015-00250, Paper 7 (“the 250-
`
`Decision”). Petitioner did not request rehearing in IPR2015-00250 of our
`
`decision to deny institution oftrial for claims 8, 11, 12, 16, 17, 19—21, 28,
`
`31—38, 42, 50, 51, 53,54, 62, 70, 71, 73, 74, 79, and 84 ofthe ’330 patent.
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 B2
`
`Petitioner subsequently filed the instant Petition challenging the
`
`patentability of each claim that was denied review in IPR2015-00250. For
`
`the reasons below, based on the circumstances of this case, we exercise our
`
`discretion under 35 U.S.C. § 325(d) to deny the Petition and, therefore,
`
`decline to institute inter partes review.
`
`I.
`
`BACKGROUND
`
`A.
`
`The ’330 Patent (Ex. 1001)
`
`The ’330 patent, titled “Driver Assist System for Vehicle,” issued
`
`September 24, 2013, from US. Application No. 13/621,382, filed September
`
`17, 2012. Ex. 1001. Petitioner contends the earliest effective filing date of
`
`the ’330 patent is January 22, 2002. Pet. 13—16. The ’330 patent is directed
`
`to a system for a vehicle, including a camera with an exterior field of view
`
`and a video display operable to display image data captured by the camera to
`
`the driver of the vehicle. Ex. 1001, Abstract. The system is operable to
`
`detect objects in the exterior field of view and to provide a visual alert and
`
`an audible alert responsive to detection of an object exterior of the vehicle.
`
`Id.
`
`B.
`
`Illustrative Claim
`
`Claims 1, 39, 59, and 76 of the ’330 patent are independent. Claims
`
`2—38 ultimately depend from claim 1, claims 40—58 ultimately depend from
`
`claim 39, claims 60—75 ultimately depend from claim 59, and claims 77—89
`
`ultimately depend from claim 76. Claim 1 of the ’330 patent is illustrative
`
`of the claims at issue:
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 B2
`
`‘
`
`1. A driver assist system for a vehicle, said driver assist
`system comprising:
`a rearward facing camera disposed at a vehicle equipped
`with said driver assist system and having a rearward field
`of View relative to the equipped vehicle;
`a video display viewable by a driver of the equipped
`vehicle when normally operating the equipped vehicle,
`wherein said video display is operable to display image
`data captured by said rearward facing camera;
`wherein said driver assist system is operable to detect
`objects present in said rearward field of view of said
`rearward facing camera
`wherein said driver assist system is operable to provide a
`display intensity of said displayed image data of at least
`about 200 candelas/sq. meter for viewing by the driver of
`the equipped vehicle;
`q wherein said driVer assist system is operable to provide a
`visual alert to the driver of the equipped vehicle respon-
`sive to detection of an object rearward of the equipped
`vehicle during a reversing maneuver of the equipped
`vehicle;
`wherein said driver assist system is operable to provide an
`audible alert to the driver of the equipped vehicle
`responsive to detection of an object rearward of the
`equipped vehicle during a reversing maneuver of the
`equipped vehicle; and
`wherein said visual alert comprises electronically gener-
`ated indicia that overlay said image data displayed by
`said video display, and wherein said electronically gen-
`erated indicia at least one of (i) indicate distance to a
`detected object rearward of the equipped vehicle and (ii)
`highlight a detected object rearward of the equipped
`vehicle.
`
`Ex. 1001, 31:47—32:12.
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 B2
`
`C.
`
`Related Proceedings
`
`Petitioner states that the ’330 patent is a subject of the following civil
`
`action: Magna Electronics Inc. v. Valeo, I_nc., No. 2:14-cv-10540 (ED.
`
`Mich.). Pet. 2.
`
`D.
`
`Asserted Grounds of Unpatentability
`
`The table below compares the combinations of references Petitioner
`
`asserted against claims 8, 11, 12, 16, 17, 19—21, 28, 31—38, 42, 50, 51, 53,-
`
`54, 62, 70, 71, 73, 74, 79, and 84 under 35 U.S.C. § 103(a) in
`
`IPR2015-00250, for which institution was denied, to the combinations
`
`Petitioner asserts in this proceeding:
`
`Challenged
`Clai'm(s)
`
`References Asserted in
`IPR2015-00250
`,
`
`
`
`
`
`
`IPR2015-01415
`
`Lemelson, Schofield, and Lemelson, Schofield,
`8, 11, 12, 16,
`17, 50, 51, 53, Tokito3
`Tokito, and Okada“
`54, 70, 71, 73,
` 74, and 84
`
`References Asserted in
`
`
`
`ew References in Bold
`
`
`
`1 US. Patent No. 6,553,130 B1 (“Lemelson,” Ex. 1005), issued
`April 22, 2003, from an application filed June 28, 1996.
`2 US. Patent No. 5,670,935 (“Schofield,” Ex. 1007), issued
`September 23, 1997, from an application filed May 22, 1995.
`3 US. Patent No. 6,259,423 B1 (“Tokito,” Ex. 1006), issued July 10, 2001,
`from an application filed August 17, 1998. Petitioner misidentifies Tokito as
`US. Patent No. 6,226,061 in the Petition, which we understand to be an
`inadvertent mistake in light of the content of Exhibit 1006. See Pet. 9.
`4 EP 1 170 173 A2 (“Okada,” Ex. 1014), published January 9, 2002.
`5
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 B2
`
`Challenged
`Claim(s)
`
`References Asserted in
`IPR2015-00250
`
`19
`
`Lemelson, Schofield,
`Tokito, Kajimoto,5 and
`He6 or Liu7
`
`
`
`References Asserted in
`IPR2015-01415
`New References in Bold
`
`Lemelson, Schofield,
`Tokito, Kajimoto, and
`Millikan8
`
`
`
`- Lemelson, Schofield,
`- Tokito,Kajimoto, andLiu
`- Lemelson, Schofield,
`
`
`
`Lemelson, Schofield,
`Tokito, Kajimoto, Liu,
`
`
`
`Lemelson, Schofield,
`Tokito, Schaefer,9 and
`Tokito, Schaefer,
`
`Secor10
`Secor, and DeVriesll
`
`
`
`Lemelson, Schofield,
`Lemelson, Schofield,
`Tokito, and Hsu12
`Tokito, Hsu, and Breedl3
`
`
`
`
`Lemelson, Schofield, and
`Lemelson, Schofield,
`
`Tokito
`Tokito, and Turnbulll4
`
`20
`
`21
`
`28
`
`Tokito, Kajimoto, and
`He
`
`Lemelson, Schofield,
`
`Tokito, Kajimoto,
`He, and Millikan
`
`Lemelson, Schofield,
`
`and Millikan
`
`
`
`
`
`34—38
`
`5 US. Patent No. 5,920,367 (“Kajimoto,” Ex. 1009), issued July 6, 1999,
`from an application filed October 10, 1997.
`6 US. Patent No. 6,359,392 B1 (“He,” Ex. 1010), issued March 19, 2002,
`from an application filed January 4, 2001.
`7 US. Patent No. 6,593,011 B2 (“Liu,” Ex. 1011), issued July 15, 2003,
`from an application filed July 24, 2001.
`8 US. Patent No. 5,883,684 (“Millikan,” Ex. 1016), issued March 16, 1999.
`9 US. Patent No. 4,731,769 (“Schaefer,” Ex. 1008), issued March 15, 1988,
`from an application filed April 14, 1986.
`‘0 US. Patent No. 5,289,321 (“Secor,” Ex. 1012), issued February 22, 1994.
`” US. Patent No. 6,158,655 (“DeVries,” Ex. 1017), issued December 12,
`2000.
`‘2 US. Patent No. 6,100,811 (“Hsu,” Ex. 1013), issued August 8, 2000,
`from an application filed December 22, 1997.
`'3 US. Patent App. No. 2001/0002451 A1 (“Breed,” Ex. 1018) published
`May 31, 2001.
`'4 WO 01/080353 A1 (“Turnbull,” Ex. 1015), published October 25, 2001.
`6
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 B2
`
`Challenged
`Claim(s)
`
`
`
`References Asserted in
`
`IPR2015-00250
`
`
`
`
`References Asserted in
`
`IPR2015-01415
`ew References in Bold
`
`
`Lemelson, Schofield,
`Tokito, Okada, and
`Shimizu15
`
`
`
`
`
`42, 62, 79
`
`Lemelson, Schofield, and
`Tokito
`
`II. ANALYSIS
`
`In determining whether to institute inter partes review, we may “deny
`
`some or all grounds for unpatentability for some or all of the challenged
`
`claims.” 37 CPR. § 42.108(b); see 35 U.S.C. § 314(a). Our discretionary
`
`determination of whether to institute review is guided by 35 U.S.C. § 325(d),
`
`which states, in relevant part, that “[i]n determining whether to institute or
`
`order a proceeding under this chapter, chapter 30, or chapter 31, the Director
`
`may take into account whether, and reject the petition or request because, the
`
`same or substantially the same prior art or arguments previously were
`
`presented to the Office (emphasis added).”16
`
`As shown in the table above, Petitioner’s second attempt to challenge
`
`claims 8,11,12,16,17,19—21, 28, 31—38, 42, 50, 51, 53, 54, 62, 70, 71, 73,
`
`74, 79, and 84 of the ’330 patent as obvious relies on the identical references
`
`Petitioner asserted in the 250-Petition, with the addition of a single new
`
`reference for each of the prior challenges other than for claim 19 (for which
`Millikan is added in place of He or Liu),'and claims 42, 62, and 79 (for
`
`which two new references are added). In the 250-Petition, Petitioner
`
`‘5 EP 1 065 642 A2 (“Shimizu,” Ex. 1026), published January 3, 2001.
`'6 Chapter 31 of the Patent Act covers inter partes review proceedings.
`Thus, although § 325(d) appears in Chapter 32, which is directed to post-
`grant reviews, it is applicable to inter partes reviews.
`7
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 B2
`
`asserted that “[b]ut for the fact that the Challenged Claims recite a few
`
`essentially trivial matters of design choice that were well known by January
`
`2002, and/or features already known as being desirably incorporated into
`
`automobiles, they would all be anticipated by Lemelson, which disclosed
`
`virtually the entirety of the claimed inventions years earlier.” 250-Petition,
`
`20—21.
`
`According to Petitioner, Okada has been added with respect to audible
`
`alerts Petitioner previously argued in IPR2015-00250 were disclosed by
`
`Lemelson, because Okada is “more robust in certain important respects.”
`
`Pet. 5. Petitioner does not identify what important respects are being
`
`referred to, or otherwise explain why Okada is more robust. Petitioner also
`
`relies On Millikan “to demonstrate that the number of LEDs used to
`
`backlight an LCD panel was a routine matter of design choice at the time of
`
`the invention of the ’330 patent, and that it was known that a plurality of
`
`LEDs may be used when the other components of the LCD display so
`
`require, in order to avoid ‘undesirable dark spots.”’ Id. Petitioner also states
`
`that it relies on Breed as disclosing a weight or “biometric characteristic,”
`
`Shimizu as disclosing displaying distances from the rear end of a vehicle,
`
`DeVries as disclosing a rearview mirror incorporating a “video display” and
`
`a “touch sensitive input,” and Tumbull as disclosing state of the art systems
`
`circa 2000. 1d. at 5—7. Petitioner also asserts that a majority of the newly
`
`cited references were not considered during prosecution of the ’330 patent.
`
`Id. at 7.
`
`Rather than identify new arguments based on additional references,
`
`Petitioner instead makes the identical argument presented in the 250-
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 B2
`
`Petition, asserting once again that “[b]ut for the fact that the Challenged
`
`Claims recite a few essentially trivial matters of design choice that were well
`
`known by January 2002, and/or features already known as being desirably
`
`incorporated into automobiles, they would all be anticipated by Lemelson,
`
`which disclosed virtually the entirety of the claimed inventions years
`
`earlier.” Pet. 22. It is not apparent from the Petition that the additional
`
`references provided by Petitioner are necessary to Petitioner’s grounds. For
`
`example, with respect to claims 42, 62, and 79, Petitioner states that “[t]o the
`
`extent a more explicit disclosure could possibly be required, Shimizu
`
`describes a vehicle drive assist system that displays ‘distance lines’ to
`
`provide easy recognition of distances between the rear end of the vehicle and
`
`obstructive objects when traveling backwards in a vehicle.” Id. at 39.
`
`Similarly, Petitioner argues with respect to claims 19, 20, and 21, that “if
`
`using one LED is clear from Kajimoto, and it is, then using more than one
`
`LED to backlight a device would be obvious and is nothing more than an
`
`engineering choice based on a specific application.” Id. at 51. Nevertheless,
`
`Petitioner introduces a new reference, Millikan, as disclosing this feature
`
`even though Petitioner asserts it would have been obvious from Kajimoto,
`
`the reference relied upon by Petitioner in IPR2015-00250. Id. Typically an
`
`obviousness ground based on the addition of superfluous or redundant
`
`references to previously asserted references raises substantially the same
`
`prior art and arguments previously asserted.
`
`Petitioner also makes several broad assertions to differentiate its new
`
`allegations from its prior petition, including that the Petition “presents for
`
`the first time new arguments, additional prior art references, and
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 B2
`
`combinations [which]could not have been presented previously, based on the
`
`results of prior art searches previously performed and/or interpretations of
`
`those references then-available to Petitioner.” Pet. 4—5. Petitioner, however,
`
`offers no evidence in support of its contention that the arguments raised in
`
`this proceeding “could not have been presented previously.” To the
`
`contrary, as noted above, Petitioner makes the same argument in both cases
`
`that Lemelson discloses “virtually the entirety of the claimed inventions
`
`years earlier.”
`
`On multiple occasions the Board has recognized that an allegation of
`
`obviousness in a second petition may be based upon “substantially the same”
`
`prior art and arguments previously presented to the Office in an earlier
`
`petition, within the meaning of 35 U.S.C. § 325(d), even if the second
`
`petition includes prior art not asserted in the prior petition. See Customplay,
`
`LLC, v. Clearplay, Inc., IPR2014-00783, slip op. at 11—13 (PTAB Nov. 7,
`
`2014) (Paper 9) (exercising § 325(d) discretion to decline to institute trial
`
`when ground presented in second petition presents substantially same prior
`
`art and arguments as prior petition despite addition of prior art); Unilever,
`Inc. v. The Proctor & Gamble Co., IPR2014-00506 (PTAB July 7, 2014)
`
`(Paper 17) (same); Medtronic, Inc. v. Robert Bosh Healthcare Sys, Inc.,
`
`IPR2014-00436, slip op. at 11—12 (PTAB June 19, 2014) (Paper 17) (same).
`
`In this case, as explained above, Petitioner contends the additional
`
`references do no more than support Petitioner’s prior contention that certain
`
`features of the challenged claims are a matter of design choice or were
`
`already known as being desirably incorporated into automobiles. Thus,
`
`despite Petitioner’s addition of Okada, Millikan, DeVries, Breed, Turnbull,
`
`10
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 B2
`
`and Shimizu to the obviousness grounds previously asserted in
`
`IPR2015-00250, Petitioner’s grounds in this proceeding present substantially
`
`the same art, and substantially the same arguments, as previously asserted by
`
`Petitioner in IPR2015-00250.
`
`Finally, we take into consideration the fact that the Petition was filed
`
`after our decision denying institution of-review of the same challenged
`
`claims was entered in IPR2015-00250, and that it seeks to correct
`
`deficiencies with the prior petition identified in our denial of those prior
`
`grounds. Such a consideration is a factor which weighs against institution of
`
`a second petition. See ZTE Corp. v. ContentGuard Holdings Inc., IPR2013-
`
`00454, slip op. at 5—6 (PTAB. Sept. 25, 2013) (Paper 12) (“A decision to
`
`institute review on some claims should not act as an entry ticket, and a how-
`
`to guide, for the same Petitioner .
`
`.
`
`. for filing a second petition to challenge
`
`those claims which it unsuccessfully challenged in the first petition”);
`
`Butamax Advanced Biofuels LLC v.' Gevo, Inc., Case IPR2014-00581, slip
`
`op. 12—13 (PTAB Oct. 14, 2014) (Paper 8) (“Allowing similar, serial
`
`challenges to the same patent, by the same petitioner, risks harassment of
`
`patent owners and frustration of Congress’s intent in enacting the Leahy-
`
`Smith America Invents Act.”); see also 37 C.F.R. § 42.1(b) (patent rules
`
`promulgated for AIA post-grant proceedings, including those pertaining to
`
`institution, are “construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding”); 35 U.S.C. § 316(b) (regulations for AIA
`
`post-grant proceedings take into account “the efficient administration of the
`
`Office” and “the ability of the Office to timely complete [instituted]
`
`proceedings”).
`
`11
`
`
`
`‘ IPR2015-01415
`
`Patent 8,543,330 B2
`
`Accordingly, we exercise our discretion under 35 U.S.C. § 325(d) to
`
`deny institution of review.
`
`111. CONCLUSION
`
`For the foregoing reasons, based on the circumstances of this case, we
`
`exercise our discretion under 35 U.S.C. § 325(d), and deny the Petition
`
`requesting institution of inter partes review of claims 8, 11, 12, 16, 17, 19~
`
`21, 28, 31—38, 42, 50, 51, 53, 54, 62, 70, 71, 73,74, 79, and 84 ofthe ’330
`
`patent.
`
`’IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied as to claims 8, 11, 12, 16, 17,
`
`19—21, 28, 31—38, 42, 50, 51, 53, 54, 62, 70, 71,73, 74, 79, and 84 ofthe ‘
`
`’330 patent.
`
`12
`
`
`
`IPR2015-01415
`
`Patent 8,543,330 82
`
`PETITIONER:
`
`Tammy J. Terry
`terry@oshaliang.com
`
`Seema Mehta
`
`mehta@osha1iang.com
`
`Peter C. Schecter
`
`schechter@oshaliang.com
`
`PATENT OWNER:
`
`David K.S. Cornwell
`
`davidc-PTAB@skgf.com
`
`Salvador M. Bezos »
`
`sbezos-PTAB@skgf.com
`
`Timothy A. Flory
`Flory@g1bf.eom
`
`Terence J. Linn
`
`linn@glbf.com
`
`13
`
`
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