Takeaway: Mere cursory assertions of obviousness, such as “anticipation is the epitome of obviousness” or “rejection under § 103 would also be proper,” do not comply with the rules governing content for a petition for inter partes review. A petition under 37 C.F.R. § 42.22(a)(2) must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.”

In its Decision, the Board granted institution of inter partes review (IPR) of claims 1, 2, 4-7, 9-16, 18-20, and 23 of the ’929 patent. The ’929 patent discloses an imaging system for vehicles that is able to determine if another vehicle is adjacent to, forward of, or rearward of the vehicle equipped with the imaging system. Petitioner asserted the following grounds of unpatentability: (1) claims 1, 2, 4-7, 9-15, 16, 18-20, and 23 as anticipated by Pawlicki; (2) claims 1, 2, 4-7, 9-15, 16, 18-20, and 23 as obvious over Pawlicki; (3) claims 1, 2, 4-7, and 9-15 as obvious over Pawlicki and Tzomakas; (4) claims 1, 2, 4-7, and 9-15 as obvious over Pawlicki and Broggi II; (5) claims 1, 2, 4-7, and 9-15 as obvious over Pawlicki and Broggi I; (6) claims 1, 16, and 18 as anticipated by Yamamura; (7) claims 1, 16, and 18 as obvious over Yamamura; (8) claims 16 and 18 as anticipated by Kenue; (9) claims 16 and 18 as obvious over Kenue; (10) claim 1 as anticipated by Graefe; (11) claim 1 as obvious over Graefe; (12) claim 1 as anticipated by Thorpe; (13) claim 1 as obvious over Thorpe; (14) claim 4 as obvious over Yamamura and Sun; and (15) claims 3, 8, 17, 21, and 22 as obvious over Pawlicki and Jeon.

Patent Owner asserted that Petitioner had failed to identify all of the real parties-in-interest (RPI). Patent Owner alleged, based on the Annual Report of the parent company, that TRW Automotive Holdings Corp. exhibits a significant amount of control over Petitioner. A similar argument was made regarding Petitioner’s alleged failure to name ZF Friedrichshafen AG as a RPI. The Board was unpersuaded by the evidence proffered by Patent Owner to support its allegations regarding control. The Board concluded that the evidence does not establish anything other than a traditional parent/subsidiary business relationship, which is not sufficient to make the parent a real party in interest in this IPR.

Next, Patent Owner asserted that Sun, Broggi II, Graefe, and Tzomakas are not patents or printed publications, and therefore cannot serve as a basis for granting the Petition. Regarding Sun, Petitioner merely asserts that Sun was published before Dec. 23, 2004. Petitioner does not provide the source or date of the asserted public availability and Sun bears no indicia that it was publicly available. The Board determined that Petitioner had not established sufficiently that Sun is a printed publication.

Petitioner next asserted that Broggi II was published before the Dec. 23, 2004 dated because of the June 14-17, 2004 date that appears on its first page. Patent Owner alleged that that the 2004 copyright notice and date asserted by Petitioner are insufficient to establish Broggi II as a printed publication. The Board agreed with Patent Owner.

Regarding Graefe, Petitioner asserted a publication date at least one year before Dec. 23, 2004 on the basis of information printed on the reference. Patent Owner argued that the asserted date and attorney argument are insufficient to establish that Graefe qualifies as a prior art printed publication. The Board agreed with Patent Owner. Petitioner and Patent Owner made similar arguments regarding Tzomakas and the Board again agreed with Patent Owner.

Turning to claim construction, the Board referred to the “shadow clause” that is recited in independent claim 1 as: “responsive to…processing of…captured image data, said control distinguishes an object present in the field of view of said imaging array sensor from a shadow in the field of view of said imaging array sensor.” Petitioner alleged that there is no temporal element in this clause. The Board noted that the clause lacks any recitation of a temporal requirement. The Board also determined that the specification does not provide an indication of a temporal element for this clause. Thus, the Board construed the shadow clause as lacking a temporal element. The Board also construed “object” and “object of interest” as not having any substantive difference.

Turning to the merits, the Board first addressed Petitioner’s anticipation challenge based on Pawlicki. Petitioner made four assertions in its anticipation challenge. First, Petitioner asserted that Pawlicki discloses that during the daytime, the control may detect a target vehicle by detecting the front horizontal shadow of the vehicle on the road surface. The Board stated that Pawlicki clearly discloses detecting a shadow of vehicle and uses this to identify a vehicle; however, the shadow clause does not require merely detecting a shadow. It requires distinguishing the shadow from an object.

Second, Petitioner asserted that Pawlicki discloses the elements in the shadow clause because the reference discloses that “the edge detection algorithm 16a of control 16 may function to detect and determine if there is more than one vehicle present at the side of the subject vehicle 12.” Patent Owner argued that Pawlicki does not distinguish a shadow from an object present in the field of view. The Board stated that Patent Owner’s position does not recognize that Pawlicki may detect one object by its shadow and the second object by a front or side panel.

Third, Petitioner argued that Pawlicki uses different detection systems for daytime and nighttime driving. The Board was not persuaded that detecting shadows by day and detecting headlights by night meets the limitations of the shadow clause. Fourth, Petitioner argued that Pawlicki discloses use of multiple systems, wherein one system may detect a shadow and another system may detect an object. The Board did not find this argument persuasive. The Board concluded that Petitioner had shown a reasonable likelihood that each and every element as set forth in claim 1 is found in Pawlicki. Thus, the Board determined there is a reasonable likelihood Petitioner will prevail in establishing that claims 1, 2, 4–7, and 9–15 are not patentable because they are anticipated by Pawlicki. The Board reached a similar conclusion for claims 16, 18-20, and 23.

Petitioner asserted that claims 1, 2, 4-7, 9-16, 18-20, and 23 would have been obvious in view of Pawlicki relying on a footnote quoting the maxim, “anticipation is the epitome of obviousness.” The Board noted that there are separate tests for determining anticipation and obviousness. A petition under 37 C.F.R. § 42.22(a)(2) must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” The Board determined that Petitioner’s cursory analysis of the obviousness grounds fails to provide a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence. The Board, therefore, determined that Petitioner has not established a reasonable likelihood that it will prevail on any of its obviousness challenges based on Pawlicki.

As for Petitioner’s anticipation and/or obviousness challenge based on Yamamura, Thorpe, or Kenue, the Board exercised its discretion and determined not to institute a trial of claims 1, 16, and 18 based on Yamamura, Thorpe, or Kenue. The Board stated that Petitioner does not articulate a meaningful distinction in terms of relative strengths of the various grounds of unpatentability or any evidence clearly favoring any one of the asserted grounds over the others. Regarding the obviousness challenge based on Yamamura, Petitioner again relies on a footnote asserting that “anticipation is the epitome of obviousness.” The Board determined that the obviousness challenge based on Thorpe merely made conclusory statements which were not persuasive. Petitioner’s obviousness challenge based on Kenue merely consisted of the statement that “rejections under § 103 would also be proper.” The Board stated this did not comply with the rules governing content of a petition for IPR.

TRW AUTOMOTIVE US LLC v. MAGNA ELLECTRONICS INC., IPR2015-00960, 61

Paper 13: Decision Institution of Inter Partes Review

Dated: October 10, 2015

Patents: 8,116,929

Before: Phillip J. Kauffman, Barry L. Grossman, Robert J. Weinschenk

Written by: Grossman

Related proceedings: Magna Electronics Inc. v. TRW Automotive Holdings Corp.et al., No. 1:13-cv-01364 (W.D. Mich. 2013); In re Certain Vision-Based Driver Assistance System Cameras, Components Thereof, and Products Containing the Same, Inv. No. 337-TA-907, before the U.S. International Trade Commission, but the ’929 Patent has been dropped from that proceeding; the ’929 patent claims to be a continuation of applications that matured into U.S. Patent Nos. 7,991,522 (“the ’522 patent”), 7,877,175 (“the ’175 patent”), and 7,720,580 (“the ’580 patent”). A Terminal Disclaimer was filed in the ’929 patent to overcome obviousness-type double patenting rejections based on the ’522 patent, the ’175 patent, and the ’580 patent. Several claims in the ’522 patent were determined to be unpatentable in IPR2014-00221. The ’522 patent also is involved in pending IPR2014-01208. Several claims of the ’175 patent were determined to be unpatentable in IPR2014-00227.3 The ’175 patent was also the subject of a petition in IPR2014-01206, but institution was denied. See IPR2014-01206, paper 13, (PTAB Dec. 23, 2014).