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Inter Partes Review of U.S. Pat. 8,599,001

Docket IPR2015-00437, Patent Trial and Appeal Board (Dec. 19, 2014)
Bart Gerstenblith, Frances Ippolito, Justin Arbes, presiding
Case TypeInter Partes Review
Patent
8599001
Petitioner TRW Automotive U.S. LLC
Patent Owner Magna Electronics Inc.
Assignee DONNELLY CORPORATION
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Inter Partes Review of U.S. Pat. 8,599,001

Docket IPR2015-00438, Patent Trial and Appeal Board (Dec. 19, 2014)
Bart Gerstenblith, Frances Ippolito, Justin Arbes, presiding
Case TypeInter Partes Review
Patent
8599001
Petitioner TRW Automotive U.S. LLC
Patent Owner Magna Electronics Inc.
Assignee DONNELLY CORPORATION
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17 Termination Settlement After Institution: Judgment Termination of the Proceeding

Document IPR2015-00438, No. 17 Termination Settlement After Institution - Judgment Termination of the Proceeding (P.T.A.B. Feb. 22, 2016)
Before JUSTIN T. ARBES, BART A. GERSTENBLITH, and FRANCES L. IPPOLITO, Administrative Patent Judges.
The parties also filed a copy of their written settlement agreement (Ex. 1072) and included in their motion a request that the settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
The parties’ joint motion to terminate was filed prior to DUE DATES 5–7 in the proceeding, and the Board has not made a final decision on the merits.
Given these facts, we determine that it is appropriate to terminate the proceeding without rendering a final written decision under 37 C.F.R. § 42.72.
In consideration of the foregoing, it is hereby: ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information, kept separate from the file of U.S. Patent No. 8,599,001 B2, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted; and FURTHER ORDERED that the joint motion to terminate the instant proceeding (Paper 31) is granted and the proceeding is hereby terminated.
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17 Termination Settlement After Institution: Judgment Termination of the Proceeding

Document IPR2015-00437, No. 17 Termination Settlement After Institution - Judgment Termination of the Proceeding (P.T.A.B. Feb. 22, 2016)
Before JUSTIN T. ARBES, BART A. GERSTENBLITH, and FRANCES L. IPPOLITO, Administrative Patent Judges.
The parties also filed a copy of their written settlement agreement (Ex. 1072) and included in their motion a request that the settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
The parties’ joint motion to terminate was filed prior to DUE DATES 5–7 in the proceeding, and the Board has not made a final decision on the merits.
Given these facts, we determine that it is appropriate to terminate the proceeding without rendering a final written decision under 37 C.F.R. § 42.72.
In consideration of the foregoing, it is hereby: ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information, kept separate from the file of U.S. Patent No. 8,599,001 B2, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted; and FURTHER ORDERED that the joint motion to terminate the instant proceeding (Paper 31) is granted and the proceeding is hereby terminated.
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13 Notice: Notice of Refund

Document IPR2015-00438, No. 13 Notice - Notice of Refund (P.T.A.B. Jul. 27, 2015)
Petitioner’s request for a refund of certain post-institution fees paid on December 19, 2014 in the above proceeding is hereby granted.
The amount of $800 has been refunded to the Petitioner's deposit account ending in 0600.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the
Case IPR2015-00438 Patent 8,599,001 Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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13 Notice: Notice of Refund

Document IPR2015-00437, No. 13 Notice - Notice of Refund (P.T.A.B. Jul. 27, 2015)
Petitioner’s request for a refund of certain post-institution fees paid on 12/19/2014 in the above proceeding is hereby granted.
The amount of $800 has been refunded to the Petitioner’s deposit account.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
For the PATENT OWNER:
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10 Decision Granting Institution: Decision Institution of Inter Partes Review

Document IPR2015-00438, No. 10 Decision Granting Institution - Decision Institution of Inter Partes Review (P.T.A.B. Jul. 10, 2015)
8 We note that, to the extent Dr. Miller relies on other documents to support his opinion that Vellacott’s image sensor is Model #ASIS 1011, those references are not discussed at all in the Petition and are not part of Petitioner’s asserted ground of unpatentability; consequently, we give that analysis no weight.
Third, Patent Owner argues that changing Vellacott’s orientation would render it unsatisfactory for its intended purpose because Vellacott detects headlights in the rearward direction to “‘dim[] the rear-view and wing mirrors automatically to reduce glare to the driver.’” Prelim. Resp. 23–24 (citing Ex. 1004, 4).
We give that aspect of Dr. Miller’s testimony no weight, but conclude that Petitioner has established a reasonable likelihood of prevailing on the asserted ground regardless.9 Eighth, Patent Owner argues that Vellacott and Kenue do not teach a “module attached at the windshield,” as recited in claim 1.
Further, as Patent Owner correctly points out, Petitioner does not explain in the Petition why it would have been obvious based on Vellacott, which faces rearward of the vehicle, to locate the imputer at an area swept by a windshield wiper, and merely cites Dr. Miller’s declaration.
Patent Owner does not explain sufficiently, however, why including Venturello’s shutter and image intensifier components are so substantial that a person of ordinary skill in the art would not have considered incorporating Venturello’s fog detection, for example, into the combined device taught by the other references.
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10 Decision Granting Institution: Decision Institution of Inter Partes Review

Document IPR2015-00437, No. 10 Decision Granting Institution - Decision Institution of Inter Partes Review (P.T.A.B. Jul. 10, 2015)
8 We note that, to the extent Dr. Miller relies on other documents to support his opinion that Vellacott’s image sensor is Model #ASIS 1011, those references are not discussed at all in the Petition and are not part of Petitioner’s asserted ground of unpatentability; consequently, we give that analysis no weight.
Third, Patent Owner argues that changing Vellacott’s orientation would render it unsatisfactory for its intended purpose because Vellacott detects headlights in the rearward direction to “‘dim[] the rear-view and wing mirrors automatically to reduce glare to the driver.’” Prelim. Resp. 23–24 (citing Ex. 1004, 4).
We give that aspect of Dr. Miller’s testimony no weight, but conclude that Petitioner has established a reasonable likelihood of prevailing on the asserted ground regardless.9 Eighth, Patent Owner argues that Vellacott and Kenue do not teach a “module attached at the windshield,” as recited in claim 1.
Further, as Patent Owner correctly points out, Petitioner does not explain in the Petition why it would have been obvious based on Vellacott, which faces rearward of the vehicle, to locate the imputer at an area swept by a windshield wiper, and merely cites Dr. Miller’s declaration.
Patent Owner does not explain sufficiently, however, why including Venturello’s shutter and image intensifier components are so substantial that a person of ordinary skill in the art would not have considered incorporating Venturello’s fog detection, for example, into the combined device taught by the other references.
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