TRW Automotive US LLC v. Magna Electronics Inc.
In two separate but related written decisions, the Patent Trial and Appeal Board (PTAB or Board) denied institution of inter partes review of two related patents, concluding that the petitioner had not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the patents. The PTAB further denied the petitioner’s request for rehearing, finding that the Board did not overlook the petitioner’s arguments when denying institution of inter partes review. TRW Automotive US LLC v. Magna Electronics Inc., Case Nos. IPR2014-00257 (PTAB, June 26, 2014) (Gerstenblith, APJ); IPR2014-00259 (PTAB, June 26, 2014) (Gerstenblith, APJ); IPR2014-00259 (PTAB, Aug. 28, 2014) (Gerstenblith, APJ).
The patents at issue relate generally to photosensor arrays used in vehicles to identify and capture images in line with the vehicle’s primary direction of travel. The photoarray further utilizes light signal information to determine whether there are headlights or tail lights in the driver’s forward field of view so as to automatically control the vehicle’s headlight beam level, thus minimizing annoyance or debilitation of other drivers. The petitioner filed its IPR petitions challenging several similar claims in the patents after the patent owner brought an infringement lawsuit against the petitioner.
The PTAB noted that, when reviewing the validity of a patent, the Supreme Court and Federal Circuit agreed that any analysis of interrelated or combined teachings and the background knowledge of a person of ordinary skill in the art “should be made explicit” and that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”
The petitioner pointed to several prior art references that, it argued, when combined would have rendered the challenged claims obvious. In response, the patent owner argued that the petitioner had failed to articulate a single reason why a person of skill in the art would have thought to combine the references, or even why a person of skill in the art would have believed that the references could even operate once combined. Therefore, the patent owner contended that the petitioner had “failed to provide and support sufficient obviousness rationales in view of the Supreme Court’s KSR decision” and could not meet the threshold showing that it was likely to prevail in its grounds of obviousness.
The PTAB agreed with the patent owner, noting that the petitioner “fail[ed] to provide a sufficient reason with rational underpinning as to why one of ordinary skill in the art would have been prompted to combine the teachings [of the references] to achieve the claimed systems.” As such, the PTAB determined that the petitioner had not demonstrated a reasonable likelihood that the challenged claims were unpatentable.
The petitioner here failed to heed a very important rule: “[a] petition for inter partes review must explain specifically how the construed claim is unpatentable, and specify where each element of the claim is found in the prior art.”
Though the petitioner filed a request for rehearing, claiming that the PTAB had abused its discretion in denying institution of inter partesreview, the request was denied. The PTAB noted that such a request “must identify, specifically, all matters the party believes the Board misapprehended or overlooked.” The PTAB explained that, for each argument that the petitioner claimed was overlooked by the Board, the petitioner had not raised the argument in its petition and that the PTAB could not overlook an argument that was never raised. Thus, arguments and further explanation may not be raised for the first time on rehearing.