Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: July 10, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE U.S. LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`____________
`
`Cases IPR2015-00436, IPR2015-00437,
`IPR2015-00438, and IPR2015-00439
`Patent 8,599,001 B2
`____________
`
`Before JUSTIN T. ARBES, BART A. GERSTENBLITH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

`
`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`
`Paper 3
`(“Pet.”)
`
`Petitioner, TRW Automotive U.S. LLC, filed four Petitions requesting
`inter partes review of claims 1–24, 28, 32, 34–40, 42–69, 71, and 73–109 of
`U.S. Patent No. 8,599,001 B2 (Ex. 1001, “the ’001 patent”)1 pursuant to
`35 U.S.C. §§ 311–19. Patent Owner, Magna Electronics Inc., filed a
`Preliminary Response in each proceeding, as listed in the following chart.
`Case Number
`Challenged
`Petition
`Preliminary
`Claims
`Response
`IPR2015-00436 1–10, 15–23, 28,
`Paper 9 (“Prelim.
`32, 34–40, and
`Resp.”)
`42–55
`IPR2015-00437 24, 56–69, 71,
`and 73–78
`IPR2015-00438 79–95
`
`Paper 3
`(“-437 Pet.”)
`Paper 4
`(“-438 Pet.”)
`Paper 2
`(“-439 Pet.”)
`
`Paper 9 (“-437
`Prelim. Resp.”)
`Paper 9 (“-438
`Prelim. Resp.”)
`Paper 9 (“-439
`Prelim. Resp.”)
`
`IPR2015-00439 11–14 and
`96–109
`
`We have jurisdiction under 35 U.S.C. § 314. Pursuant to 35 U.S.C.
`§ 314(a), the Director may not authorize an inter partes review unless the
`information in the petition and preliminary response “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.” For the reasons that follow,
`we institute an inter partes review as to claims 1–15, 24, 28, 32, 34–40,
`42–50, 53–66, 69, 71, 73–79, 81–85, 87–100, and 102–08 of the ’001 patent
`on certain grounds of unpatentability. To administer the proceedings more
`
`
`1 Petitioner filed its exhibits in the following series: Exhibits 1001–11
`(Case IPR2015-00436), Exhibits 1101–11 (Case IPR2015-00437),
`Exhibits 1201–11 (Case IPR2015-00438), and Exhibits 1301–11
`(Case IPR2015-00439). References herein to each of Petitioner’s exhibits
`are to the exhibit filed in the corresponding proceeding.
`
`
`
`2
`
`

`
`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`efficiently, we also exercise our authority under 35 U.S.C. § 315(d) to
`consolidate the four proceedings and conduct the proceedings as one trial.
`
`
`
`I. BACKGROUND
`A. The ’001 Patent
`The ’001 patent describes a “vehicle lighting control system for
`controlling a vehicle lighting system in an automotive vehicle comprising a
`photosensor array means for sensing light levels in a forward field of view”
`of the vehicle. Ex. 1002, col. 6, l. 61–col. 7, l. 2. The disclosed system is
`integrated with the rearview mirror of the vehicle and “directed generally
`forward of the vehicle so that it may sense a field of view forward of the
`rearview mirror” through the vehicle’s front windshield. Id. at col. 33,
`ll. 7–17. Figure 6B of the ’001 patent is reproduced below.
`
`Figure 1 depicts lens 30, photosensor array 32, logic and control circuit 34,
`and headlight switches 29. Id. at col. 33, ll. 7–46. Logic and control
`
`
`
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`3
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`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`circuit 34 receives image data from photosensor array 32, processes the data
`to “determine and identify whether there are other headlights and taillights in
`the driver’s forward field of view,” and uses that determination to “control
`automatically the vehicle headlights” via low beam mode switch 29a, mid
`beam mode switch 29b, and high beam mode switch 29c. Id. at col. 33,
`ll. 31–67.
`
`
`B. Illustrative Claim
`Claim 1 of the ’001 patent recites:
`1. A vehicular vision system, said vehicular vision
`system comprising:
`an imager comprising a lens and a CMOS photosensor
`array;
`wherein said photosensor array comprises a plurality of
`photosensor elements;
`wherein said imager is disposed at an interior portion of a
`vehicle equipped with said vehicular vision system and wherein
`said imager views exterior of the equipped vehicle through a
`windshield of the equipped vehicle and forward of the equipped
`vehicle;
`wherein at least said imager is disposed in a module
`attached at the windshield of the equipped vehicle;
`a control comprising an image processor, said image
`processor processing image data captured by said photosensor
`array;
`wherein said image processor processes captured image
`data to detect an object viewed by said imager;
`wherein said photosensor array is operable at a plurality
`of exposure periods; and
`wherein said plurality of exposure periods comprises a
`first exposure period and a second exposure period, and
`wherein the time period of exposure of said first exposure
`
`
`
`4
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`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`
`period is longer than the time period of exposure of said second
`exposure period.
`
`Publication
`(Ex. 1006,
`
`
`C. The Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent No. 4,930,742,
`issued June 5, 1990
`(Ex. 1108, “Schofield”);
`U.S. Patent No. 4,970,653, issued Nov. 13, 1990
`(Ex. 1005, “Kenue”);
`U.S. Patent No. 5,166,681, issued Nov. 24, 1992
`(Ex. 1010, “Bottesch”);
`Patent
`Japanese
`Unexamined
`No. S62-131837, published June 15, 1987
`“Yanagawa”);2
`European Patent Application Publication No. 0353200
`A2, published Jan. 31, 1990 (Ex. 1107, “Venturello”);
`International
`Patent
`Application
`Publication
`No. WO 93/11631, published June 10, 1993 (Ex. 1009,
`“Denyer”); and
`Oliver Vellacott, CMOS in camera, IEE REV., May 1994,
`at 111 (Ex. 1004, “Vellacott”).3
`
`D. The Asserted Grounds
`Petitioner challenges claims 1–24, 28, 32, 34–40, 42–69, 71, and
`73–109 of the ’001 patent as unpatentable under 35 U.S.C. § 103(a) on the
`following grounds:
`
`2 We refer to “Yanagawa” as the English translation of the original
`reference. Petitioner provided an affidavit attesting to the accuracy of the
`translation. See Ex. 1006; 37 C.F.R. § 42.63(b).
`
` 3
`
` When citing Yanagawa and Vellacott, we refer to the page numbers at the
`lower right corner of each page. See 37 C.F.R. § 42.63(d)(2).
`
`
`
`5
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`

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`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`
`Case Number(s) References
`
`Claim(s) Challenged
`
`IPR2015-00436 Vellacott and Kenue
`
`IPR2015-00436 Vellacott, Kenue, and
`Yanagawa
`IPR2015-00436 Vellacott, Kenue, and
`Bottesch
`IPR2015-00436 Vellacott, Kenue, and
`Denyer
`Vellacott, Kenue, and
`Schofield
`
`IPR2015-00437
`and
`IPR2015-00439
`IPR2015-00437 Vellacott, Kenue,
`Schofield, and Yanagawa
`Vellacott, Kenue,
`Schofield, and Venturello
`
`IPR2015-00437,
`IPR2015-00438,
`and
`IPR2015-00439
`IPR2015-00437 Vellacott, Kenue,
`Schofield, and Denyer
`IPR2015-00438 Vellacott, Kenue,
`Schofield, Venturello, and
`Yanagawa
`Vellacott, Kenue,
`IPR2015-00438
`Schofield, Venturello, and
`and
`Denyer
`IPR2015-00439
`IPR2015-00439 Vellacott, Kenue, and
`Venturello
`
`1–5, 15, 16, 23, 28,
`35–40, 42–53,4 and 55
`6–10, 32, and 34
`
`17–22
`
`54
`
`24, 56–60, 66, 67,
`73–76, 96, 97, 100,
`102–06, and 109
`61–63, 68, 69, 71, and
`77
`64, 65, 79–85, 88–93,
`98, 99, and 101
`
`78
`
`86 and 87
`
`94, 95, 107, and 108
`
`11–14
`
`
`
`
`4 Petitioner lists claims “1–5, 15–16, 23, 28, 35–40, 42–50, 52–53, and 55”
`in its Petition, but asserts later in the Petition that claim 51 is unpatentable as
`well. See Pet. 2, 37. Thus, we presume that the initial listing of claims was
`a typographical error.
`
`
`
`6
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`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`
`E. Claim Interpretation
`The Board interprets claims of unexpired patents using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). For claims of an
`expired patent, however, the Board’s claim interpretation analysis is similar
`to that of a district court. See In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir.
`2012). Claim terms are given their plain and ordinary meaning as would be
`understood by a person of ordinary skill in the art at the time of the invention
`and in the context of the entire patent disclosure. Phillips v. AWH Corp.,
`415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two
`exceptions to this general rule: 1) when a patentee sets out a definition and
`acts as his own lexicographer, or 2) when the patentee disavows the full
`scope of a claim term either in the specification or during prosecution.”
`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012). We apply this standard to the claims of the expired ’001 patent. See
`Prelim. Resp. 34–35.
`Petitioner asserts in its Petitions that “the claims at issue do not need
`specific constructions,” but proposes an interpretation for “wherein said
`vertical span is asymmetric relative to a horizon” in claims 46, 74, and 89,
`and similar language in claim 103, and cites the analysis of Jeffrey A.
`Miller, Ph.D., regarding the meaning of “predefined array” in claim 37.5 See
`
`
`5 Patent Owner argues that Petitioner did not propose an interpretation for
`any term in violation of 37 C.F.R. § 42.104(b)(3). See, e.g., Prelim. Resp.
`34–35. In the future, to avoid any confusion, Petitioner is encouraged to set
`forth clearly any proposed interpretations in a separate section of a petition.
`We also note that Dr. Miller’s declaration (Ex. 1011), filed as an exhibit in
`
`
`
`7
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`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`Pet. 5, 29–30, 35 (citing Ex. 1011 ¶¶ 184–88); -437 Pet. 5, 37–38; -438 Pet.
`4, 37–38; -439 Pet. 5, 40–41. Patent Owner proposes an interpretation for
`“operable at a plurality of exposure periods” in claim 1 and “operable at a
`first exposure period and a second exposure period” in claims 75, 90, and
`104. See Prelim. Resp. 35–37; -437 Prelim. Resp. 35–37; -438 Prelim.
`Resp. 39–41; -439 Prelim. Resp. 42–45. For purposes of this Decision, we
`conclude that only the “exposure period” terms require interpretation.
`Patent Owner argues that “operable at a plurality of exposure periods”
`and “operable at a first exposure period and a second exposure period”
`should be interpreted to mean “operable at different exposure periods during
`operation of the photosensor array to capture image data for processing by
`the image processor.” See, e.g., Prelim. Resp. 35–37; -437 Prelim. Resp.
`35–37. Patent Owner first contends that we must interpret each term “to
`preserve its validity to have its plain meaning in view of the intrinsic
`evidence of record.” Prelim. Resp. 36. We do not apply a rule of
`interpretation that claims of an expired patent in an inter partes review
`should be interpreted to preserve their validity, however. See W. L. Gore &
`Assocs., Inc. v. LifePort Scis. LLC, Case IPR2014-01321, slip op. at 9
`(PTAB Feb. 25, 2015) (Paper 7). “The different standard we use in
`construing the claims in an expired patent does not change the statutory
`requirement in this proceeding that Petitioner has the burden of proving a
`proposition of unpatentability by a preponderance of the evidence” under
`35 U.S.C. § 316(e). Id.
`
`
`each proceeding, itself includes a number of “exhibits.” The parties are
`reminded that all exhibits must be filed and numbered separately. See
`37 C.F.R. § 42.63.
`
`
`
`8
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`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`
`Patent Owner next points to the Specification of the ’001 patent,
`which states that “an exposure time or exposure period EP of the
`photosensor array 32 may be varied over some range depending on the light
`level.” Ex. 1002, col. 16, ll. 62–64; see, e.g., Prelim. Resp. 36. We do not
`agree that the cited portion of the Specification amounts to a definition of the
`claim language or indicates that the applicants were acting as their own
`lexicographer. Moreover, the cited portion does not state that the exposure
`period is “varied” during operation of the photosensor array, and thus does
`not support Patent Owner’s proposed interpretation.6 On this record, we
`conclude that the plain and ordinary meaning of the terms applies, and
`interpret “operable at a plurality of exposure periods” to mean capable of
`operating at more than one exposure period, and interpret “operable at a first
`exposure period and a second exposure period” to mean capable of operating
`at a first exposure period and second exposure period.
`
`
`II. DISCUSSION
`A. Obviousness Ground Based on Vellacott and Kenue
`(Claims 1–5, 15, 16, 23, 28, 35–40, 42–53, and 55)
`Petitioner contends that claims 1–5, 15, 16, 23, 28, 35–40, 42–53, and
`55 are unpatentable over Vellacott and Kenue under 35 U.S.C. § 103(a),
`
`6 We also note that in a continuation of the ’001 patent, U.S. Patent
`No. 8,917,169 B2 (Ex. 3001), Patent Owner recites in claim 15 a vehicular
`vision system “wherein said photosensor array is operable at a plurality of
`exposure periods; wherein at least one exposure period of said plurality of
`exposure periods is dynamically variable; [and] wherein said at least one
`exposure period is dynamically variable over a range depending on a light
`level detected by said vehicular vision system.” By contrast, the claims of
`the ’001 patent do not recite that the exposure periods are “dynamically
`variable.”
`
`
`
`9
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`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
`
`relying on the supporting testimony of Dr. Miller. Pet. 9–39. We are
`persuaded that Petitioner has established a reasonable likelihood of
`prevailing on its asserted ground as to claims 1–5, 15, 28, 35–40, 42–50, 53,
`and 55 for the reasons explained below.
`
`
`1. Vellacott
`Vellacott describes research performed at Edinburgh University and
`then “VLSI Vision Ltd in Edinburgh” (“VVL”) regarding CMOS
`(complementary metal-oxide semiconductor) image sensors. Ex. 1004, 1.
`“VVL’s approach [was] to combine image sensing with control functions on
`a single CMOS chip.” Id. Vellacott discloses that “[e]xposure control is . . .
`implemented on-chip” where “[t]he length of exposure is controlled by
`varying the pixel reset time via the vertical shift register; this allows the
`exposure period to be set in multiples of the line readout time.” Id. at 2.
`According to Vellacott, “single-chip CMOS sensors could eventually
`displace the multi-chip CCDs [charge-coupled devices] that are the current
`standard,” which “would result in smaller, cheaper, less power-hungry
`cameras.” Id. Vellacott describes a particular machine vision system called
`an “imputer” that had a mothercard with an “image sensor, frame grabber,
`microprocessor, framestore and external” input/output. Id. at 3. Vellacott
`further discloses:
`One of VVL’s customers is US automotive components
`manufacturer Donnelly Corp. Donnelly has used the imputer to
`develop electro-chromic rearview mirrors, which automatically
`reduce headlamp glare from behind. The imputer was housed
`inside the rear-view mirror and positioned to look out the rear
`and sides of the car in a 90° arc, using a chip-mounted
`microlens (Fig. 6).
`
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`
`The imputer was programmed to analyse this image to
`recognise when and where headlamps are present in the field of
`view. Based on this information, the imputer then dims the
`rear-view and wing mirrors automatically to reduce glare to the
`driver. The dimming is controlled by an analogue voltage from
`the imputer, which directly sets the chrominance of the mirror.
`Donnelly’s system is now undergoing field trials with car
`manufacturers.
`Id. at 4.
`
`
`2. Kenue
`Kenue describes a “vision method of detecting lane boundaries and
`obstacles close to a vehicle within the lane boundaries.” Ex. 1005, col. 1,
`ll. 7–11. Figure 1 of Kenue is reproduced below.
`
`
`Figure 1 depicts CCD video camera 10, analog-to-digital converter 12,
`computer 14, and three output devices: display 16, obstacle warning alarm
`18, and utilization circuit 20. Id. at col. 2, ll. 28–39. CCD camera 10 is
`“mounted in a vehicle, say at the upper center of the windshield to capture
`the driver’s view of the road ahead.” Id.
`
`
`
`11
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`IPR2015-00436, IPR2015-00437, IPR2015-00438, IPR2015-00439
`Patent 8,599,001 B2
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`
`Figure 2 of Kenue is reproduced below.
`
`
`Figure 2 shows an example of an image received in the camera image plane.
`Id. at col. 2, ll. 9–10. When processing the image to detect lane markers,
`Kenue’s system defines search areas in which to look for the lane markers.
`Id. at col. 1, ll. 59–67, col. 2, ll. 44–48, col. 3, ll. 3–6. For example,
`boxes 28 in Figure 2 illustrate search areas defined by the system. Id. at
`col. 3, ll. 3–6. Kenue discloses two approaches to searching for lane
`markers within the search areas: template matching and a Hough transform.
`Id. at col. 2, ll. 41–44. In both approaches, the system detects obstacles by
`counting strong edge points in the area between the lane boundaries. Id. at
`col. 3, ll. 59–63, col. 6, ll. 18–22. If the count indicates an obstacle closer
`than 50 feet away, the system generates an obstacle warning. Id. at col. 3,
`ll. 65–68, col. 6, ll. 22–24, col. 3, ll. 10–17.
`
`
`3. Level of Ordinary Skill in the Art
`“Section 103(a) forbids issuance of a patent when ‘the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`
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`subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405
`(2007). Petitioner argues that a person of ordinary skill in the art would
`have had “at least the qualifications of or equivalent to either a[n]
`undergraduate degree in electrical engineering or mechanical engineering
`with course work or research in automobile accessory systems with at least
`two years of work making automobile accessory systems.” Pet. 8–9 (citing
`Ex. 1011 ¶ 8). Based on the current record, including our review of the
`’001 patent and the types of problems and solutions described in the
`’001 patent and cited prior art, we agree with Petitioner’s assessment of the
`level of ordinary skill in the art and apply it for purposes of this Decision.
`
`
`4. Claim 1
`Petitioner relies on Vellacott for all limitations of claim 1, except one.
`Pet. 9–23. For example, Petitioner argues that Vellacott teaches an imager
`comprising a “CMOS photosensor array” (i.e., imputer with a CMOS image
`sensor) and “disposed at an interior portion of a vehicle” (i.e., imputer
`housed inside the rear-view mirror), as well as a “control comprising an
`image processor” (i.e., 8-bit Intel 8032 microcontroller). Id. Vellacott,
`however, discloses that its imputer was “positioned to look out the rear and
`sides of the car in a 90° arc.” Ex. 1004, 4. Petitioner, therefore, relies on
`Kenue as teaching the claim limitation that the imager “views exterior of the
`equipped vehicle through a windshield of the equipped vehicle and forward
`of the equipped vehicle.” Pet. 12–19. Petitioner contends that reversing the
`direction of an imager to face forward of a vehicle and detect objects in the
`forward direction, as taught by Kenue, would have been an obvious
`modification within the skill of an ordinarily skilled artisan, relying on the
`
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`testimony of Dr. Miller in support. Id. (citing Ex. 1011 ¶¶ 36, 62, 66–68,
`71–75, 105–10). Upon review of the parties’ papers, we are persuaded that
`Petitioner has shown a reasonable likelihood of prevailing.
`Patent Owner makes ten arguments.7 First, Patent Owner argues that
`Petitioner incorrectly equates Vellacott’s image sensor with the preferred
`embodiment described in the Specification of the ’001 patent. Prelim. Rep.
`9–11. The Specification discloses that “[a]n example of . . . a photosensor
`array 32 is the VLSI Vision Limited (VVL) Single Chip Video Camera
`Model #ASIS 1011.” Ex. 1002, col. 13, ll. 35–37. Vellacott describes a
`“Peach camera” and field trials of its disclosed imputer performed by
`Donnelly Corporation (“Donnelly”), which was the original assignee of the
`’001 patent. See Ex. 1004, 3–4; Ex. 1002. According to Petitioner and
`Dr. Miller, “Vellacott’s imputer is the claimed vehicular vehicle system of
`claim 1.” Pet. 9–10 (citing Ex. 1011 ¶¶ 26, 43, 61–75). Patent Owner
`disputes this characterization because Vellacott never mentions the specific
`Model #ASIS 1011 cited in the Specification. Prelim. Resp. 9–11. We
`agree that Vellacott does not mention Model #ASIS 1011, and that Petitioner
`has not shown definitively that the image sensor disclosed in Vellacott is
`identical to the preferred embodiment described in the ’001 patent.
`Petitioner need not prove they are the same, however. Petitioner only needs
`to establish a reasonable likelihood that claim 1 would have been obvious
`
`
`7 Patent Owner makes a number of arguments regarding the proposed
`combination of Vellacott and Kenue in all four of its Preliminary Responses.
`For those arguments, we refer only to the briefing in Case IPR2015-00436
`for convenience.
`
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`
`based on what is taught by Vellacott and Kenue. We conclude that
`Petitioner has done so.8
`Second, Patent Owner asserts that Petitioner improperly relies on
`“per se” rules of obviousness and inapposite case law, rather than
`performing a fact-based analysis for the proposed combination of Vellacott
`and Kenue. Prelim. Resp. 15–31. This argument is not persuasive based on
`the current record. Petitioner explains why it believes reversing the
`direction of Vellacott’s image sensor to face forward, as taught by Kenue,
`would have been an obvious modification to a person of ordinary skill in the
`art, with supporting testimony from Dr. Miller. For example, Petitioner
`contends that (1) Vellacott and Kenue operate the same way (other than one
`using a CMOS sensor and the other a CCD sensor) for the same general
`purpose; (2) a person of ordinary skill in the art would have seen the reversal
`of direction of Vellacott’s image sensor to detect headlights ahead of the
`vehicle to be an “improvement”; (3) the result of using Vellacott’s image
`sensor to view the scene ahead of the vehicle would have been predictable to
`a person of ordinary skill in the art; (4) the forward orientation is merely one
`of a finite number of solutions, where Vellacott teaches facing the image
`
`
`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. See, e.g., Ex. 1011 ¶¶ 28, 32 (citing two documents
`attached as Exhibits D and E to the declaration and referred to as “Paradiso”
`and “GEM”); Prelim. Resp. 11–12; 37 C.F.R. § 42.104(b)(5) (a petition
`must identify “[t]he exhibit number of the supporting evidence relied upon
`to support the challenge and the relevance of the evidence to the challenge
`raised, including identifying specific portions of the evidence that support
`the challenge”).
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`sensor rearward and to the side, and the only other directions are up, down,
`and forward; and (5) there would be no unexpected results from the
`proposed modification to Vellacott, i.e., “all components would work
`exactly as expected whether facing forward or backward, namely headlights
`will still be detected and identified.” Id. at 12–17 (citing Ex. 1011). We are
`not persuaded that Petitioner applied any per se rules of obviousness, as the
`analysis in the Petition discusses the specific teachings of Vellacott and
`Kenue, with citations to the references and parenthetical explanations for the
`cited case law. Petitioner’s analysis is sufficient, at this stage of the
`proceeding, to show “some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” See KSR,
`550 U.S. at 417–18 (quotation omitted).
`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 are not persuaded that Vellacott’s intended
`purpose is that narrow. Although Vellacott discloses a particular
`embodiment used by Donnelly, it broadly discloses the use of a single-chip
`CMOS image sensor as an improvement on CCD image sensors of the time,
`without restriction on the types of devices for which the sensor could be
`used. See, e.g., Ex. 1004, 1–4 (describing, for example, edge detection in an
`inspection probe, and stating that the disclosed imputer “open[s] up a large
`market that would remain nascent without CMOS imaging technology”).
`Thus, based on the current record, we disagree that changing Vellacott’s
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`orientation would not have been something a person of ordinary skill in the
`art would have considered.
`Fourth, similar to its third argument, Patent Owner asserts that
`Vellacott and Kenue are not “comparable” because (1) Vellacott detects
`headlights rearward of a vehicle to dim the rear-view mirror and Kenue
`detects lane markers in front of a vehicle, and (2) CMOS image sensors
`operate differently than CCD image sensors. See Prelim. Resp. 24–25,
`29–31. We disagree. Viewed more broadly, both references pertain to
`image sensors near or within a rear-view mirror that are used to detect
`objects and take some action based on that detection, as Petitioner contends.
`See Pet. 15, 22.
`Fifth, Patent Owner argues that the Board previously held in another
`proceeding, Case IPR2014-00293, that “Vellacott cannot be combined with
`Kenue as proposed here.” Prelim. Resp. 25–26. Kenue was not asserted in
`the prior proceeding, however. See TRW Auto. US LLC v. Magna Elecs.
`Inc., Case IPR2014-00293, slip op. at 7 (PTAB July 1, 2014) (Paper 19).
`Moreover, the decision not to institute an inter partes review in that
`proceeding was based on an entirely different record, including different
`arguments presented by Petitioner and different claims. Thus, we do not see
`the relevance of the prior determination.
`Sixth, Patent Owner argues that Petitioner improperly attempts to
`bolster its obviousness analysis by citing to the Specification of the
`’001 patent for allegedly “admitted” prior art. Prelim. Resp. 44–46. In
`particular, Petitioner cites the following disclosure in the Specification to
`argue that forward-facing image sensors were well-known and structurally
`the same as rearward-facing image sensors:
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`The method for processing the forward field of view image is
`the same as that shown through step S140 in the flow chart of
`FIG. 7A, and is generally the same as to steps S150 and S160 as
`detailed in the flow chart FIG. 8A, except that steps S155, S156
`and S162 are excluded.
`Ex. 1002, col. 33, l. 67–col. 34, l. 5; see Pet. 12–14. Although we agree with
`Petitioner that the Specification of the ’001 patent discloses performing the
`same processing regardless of whether the image is a forward or rearward
`view, the asserted ground of unpatentability is based on Vellacott and
`Kenue. Thus, we base our analysis on the teachings of the references, and
`determine that Petitioner has made a sufficient showing based on those
`teachings.
`Seventh, Patent Owner takes issue with various aspects of Dr. Miller’s
`testimony. Patent Owner argues that Dr. Miller’s declaration is flawed
`because he states in two portions that “I find no difference between the
`limitations of this claim and the specific automotive rearview mirror
`embodiment of the VVL imputer described by Vellacott,” and “I find that
`claim 1 merely takes Vellacott’s VVL imputer in the rearview mirror
`embodiment . . . and simply directs the camera portion of the imputer
`forward, but without changing any other feature of the imputer,” rather than
`assessing the claims from the perspective of a person of ordinary skill in the
`art. Ex. 1011 ¶¶ 62, 65 (emphasis added); see Prelim. Resp. 14–15. We
`disagree that these statements make Dr. Miller’s testimony improper, as he
`provides his opinions on the particular limitations of the claims as well as
`what a person of ordinary skill in the art would have found obvious based on
`the teachings of the cited references. See, e.g., Ex. 1011 ¶¶ 8–12, 61–75,
`175.
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`Patent Owner also argues that Dr. Miller improperly relies on three
`additional documents in support of his opinions on the proposed
`combination. Prelim. Resp. 28–31; see Ex. 1011 ¶¶ 68, 74 (citing three
`documents as Exhibits D, E, and N to the declaration and referred to as
`“Paradiso,” “GEM,” and “Koshizawa”). Again, on this issue we agree with
`Patent Owner because the additional documents are not discussed at all in
`the Petition and are not part of Petitioner’s asserted ground of
`unpatentability. See supra n.8. 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. Prelim.
`Resp. 39–40. Petitioner cites, for example, Vellacott’s statement that the
`imputer was “‘housed inside the rear-view mirror’” and photograph of a
`rear-view mirror in Figure 6, as well as Dr. Miller’s testimony in support.
`Pet. 19 (citing Ex. 1004, 4, Fig. 6, Ex. 1011 ¶¶ 111–12). Based on the
`current record, we are persuaded that Vellacott teaches an “imager” (i.e.,
`imputer) disposed in a “module” (i.e., a rear-view mirror assembly), which
`would be located “at” the windshield of the vehicle.
`Ninth, Patent Owner argues that Vellacott does not teach a
`“photosensor array . . . operable at a plurality of exposure periods,” as
`recited in claim 1. Prelim. Resp. 41–43. Patent Owner’s argument is
`
`9 Patent Owner also contends that the Petitions improperly incorporate by
`reference portions of Dr. Miller’s declaration for certain dependent claims.
`Prelim. Resp. 12–13. We have evaluated each of the Petitions on its own
`merits, however, and do not consider any material where the underlying
`argument or position is not explained sufficiently in the Petition itself
`(e.g., Dr. Miller’s testimony regarding the three additional references).
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`premised on its proposed interpretation of “operable at a plurality of
`exposure periods” as requiring different exposure periods during operation.
`For the reasons explained above, we do not adopt that interpretation and
`instead interpret the term to mean capable of operating at more than one
`e