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TRW Automotive U.S. LLC v. Magna Electronics Inc.

Docket IPR2015-00439, 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.
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TRW Automotive U.S. LLC v. Magna Electronics Inc.

Docket IPR2015-00436, 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.
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17 Termination Settlement After Institution: Judgment Termination of the Proceeding

Document IPR2015-00439, 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 IPR2015-00439, 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 IPR2015-00439 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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32 Termination Settlement After Institution: Judgment Termination Of the Proceeding

Document IPR2015-00436, No. 32 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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10 Decision Granting Institution: Decision Institution of Inter Partes Review

Document IPR2015-00439, 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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27 Notice: Order 37 CFR 425

Document IPR2015-00436, No. 27 Notice - Order 37 CFR 425 (P.T.A.B. Jan. 15, 2016)
A conference call in the above proceeding was held on January 12, 2016, among respective counsel for Petitioner and Patent Owner, and Judges Arbes, Gerstenblith, and Ippolito.2 Petitioner initiated the conference call to seek authorization to file a motion to compel Patent Owner to produce certain materials as routine discovery pursuant to 37 C.F.R. § 42.51(b)(1) or a motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2).
The datasheet(s), User Manual(s), and Library Reference(s) for the VLSI Vision Limited “Imputer” as described in Exhibit 1004 (“CMOS In Camera” by Oliver Vellacott) and used by Donnelly Corporation in development of electro-chromic rearview mirrors, which automatically reduce headlamp glare from behind, including: a. “Imputer ...
The Datasheet(s), User Manual(s), and Library Reference(s) for the VLSI Vision Limited ASIS #1011 device cited in the ’001 Patent.
With respect to routine discovery, Petitioner’s speculation that the listed materials are in Patent Owner’s possession (via its purchase of Donnelly), and that they might contain inconsistent information, is not sufficient under 37 C.F.R. § 42.51(b)(1)(iii).
For similar reasons, Petitioner has not explained sufficiently how it could demonstrate that producing the requested materials (if available to Patent Owner) would be “necessary in the interest of justice” to justify a motion for additional discovery.
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18 Order: Order re Conference Call 09252015

Document IPR2015-00436, No. 18 Order - Order re Conference Call 09252015 (P.T.A.B. Sep. 29, 2015)
Before JUSTIN T. ARBES, BART A. GERSTENBLITH, and FRANCES L. IPPOLITO, Administrative Patent Judges.
A conference call in the above proceeding was held on September 25, 2015, among respective counsel for Petitioner and Patent Owner, and Judges Arbes, Gerstenblith, and Ippolito.
Patent Owner argued that it needs additional time to prepare and review the Response due to the size of the four Petitions involved in this consolidated proceeding and Patent Owner’s obligations in other inter partes reviews involving the same parties.
Petitioner responded that no extension should be granted because doing so would require extending the January 11, 2016 deadline for Petitioner’s Reply (DUE DATE 2), and the parties are scheduled for trial in the related district court case in early February 2016.
Finally, as explained during the call, the parties are expected to make their declarants available for deposition promptly and at a convenient time for the opposing party to avoid any further scheduling disputes.
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