Takeaway: The mere fact that parties are co-defendants or concurrent defendants in litigation does not make them real parties-in-interest.

In its Decision, the Board denied institution of the Petition seeking inter partes review of claims 1-13 of the ’437 patent, which relates to a vehicle accessory module used in windshield electronic modules and interior rearview mirror assemblies.  As found by the Board, Petitioner had not demonstrated that a reasonable likelihood existed that it would be successful in establishing that claims 1-13 of the ’437 patent are unpatentable.

Petitioner had alleged that claims 1-3 of the ’437 patent would have been obvious under 35 U.S.C. § 103 in view of the combination of Campbell, Rayner, and Ponziana. In its Petition, Petitioner had indicated that there was only a single real-party-in-interest, namely, “TRW Automotive U.S. LLC of Farmington Hills, Michigan.” Patent Owner disputed this position, but as found by the Board, Patent Owner had not directed the Board “to any evidence establishing a real party-in-interest relationship between TRW and TRW Vehicle Safety Systems Inc., other than TRW’s identification of TRW Vehicle Safety Systems Inc. as ‘related’ and a co-defendant in a pending lawsuit.” The Board then cited case law for the proposition that “the mere fact that parties are co-defendants or concurrent defendants in litigation does not make them real parties-in-interest” before holding that Petitioner had failed to show “that either TRW Automotive Holdings Corp. or TRW Vehicle Safety Systems Inc. is a real party-in-interest in this proceeding.”

The Board next turned to claim construction. In the course of doing so, the Board interpreted certain claim terminology including “resilient element disposed at the interior surface of the vehicle windshield.”

As for patentability, Petitioner had argued that “Campbell discloses all of the limitations of claim 1, except for a detachable rearview mirror mounted to windshield 31.” Patent Owner, in reply, had argued that Campbell does not disclose a resilient element. The Board sided with Patent Owner on this point, finding that Petitioner had not explained how the relied-upon disclosure “establishes that a windshield-facing portion of optical device 2 comprises a resilient element such as inner seal 41.”

TRW Automotive U.S. LLC v. Magna Electronics Inc., IPR2014-01346
Paper 7: Decision Denying Institution of Inter Partes Review
Dated: February 20, 2015
Patent 8,179,437 B2
Before: James P. Calve, Michael J. Fitzpatrick, and Barry L. Grossman
Written by: Calve
Related Proceedings: Magna Electronics Inc. v. TRW Automotive Holdings Corp., Case 1:13-cv-00324 (W.D. Mich.)