Takeaway: A motion to exclude evidence is not a proper vehicle for challenging whether a petitioner sufficiently demonstrated that a reference is prior art––such a challenge relates to the sufficiency of the evidence, not its admissibility.
In its Final Written Decision, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 1-5, 8-13, 15-20, 25-32, 39-42, 47, and 48, but not claim 7, of U.S. Patent No. 7,859,565 B2 are unpatentable. The ’565 patent relates to rearview vision systems for vehicles. The Board began by considering Patent Owner’s Motion to Exclude Wang on the grounds that Petitioner “fail[ed] to demonstrate . . . that Wang was publicly accessible more than one year prior to the priority date of the ’565 patent.” Patent Owner argued that listing a copyright date does not indicate that an article is publicly accessible and argued that witness testimony regarding public accessibility “lacks personal knowledge.” In response, Petitioner argued that Wang “is admissible, self-authenticating evidence under Federal Rule of Evidence 902(6), and its copyright date establishes a prima facie prior art date of 1991.” In addition, Petitioner also submitted “a declaration from the IEEE custodian of records . . . to corroborate Wang’s public accessibility in 1991.” The Board concluded that “Patent Owner has not presented a cogent argument that Wang . . . is inadmissible.” After reviewing Patent Owner’s arguments, the Board characterized them as an argument “that Petitioner has not demonstrated sufficiently that Wang is prior art under 35 U.S.C. §102(b),” not an argument concerning the admissibility of Wang under the Federal Rules of Evidence. In addition, arguing that Wang is not prior art under § 102(b) “is a challenge to the sufficiency or weight to be given to Wang . . . which is not proper in a motion to exclude, which is a challenge to the admissibility of the evidence, not a challenge to sufficiency.” Accordingly, the Board determined that Patent Owner did not meet its burden of proof to establish that Wang is inadmissible under the Federal Rules of Evidence and denied the motion. The Board then turned to claim construction, interpreting claim terms according to their “broadest reasonable construction in light of the specification of the patent in which they appear.” The Board maintained the constructions that it applied in its Decision on Institution for the terms “composite image” and “without duplication of image information.” It then considered Patent Owner’s proposed construction of “image portion from an image captured” and concluded that “image portion” does not require further express construction. The Board then examined the proposed grounds for unpatentability. First, it determined that Petitioner “established, by a preponderance of the evidence, that claims 1-3, 5, 6, 8, 9, 11-15, 25, 26, 28, 29, 41, 42 and 47 are unpatentable as obvious over Nissan.” The Board, however, concluded that Nissan did not teach the limitation in claim 7 that “said fields of view of two image capture devices are dynamically adjustable.” Next, the Board concluded that Petitioner established by a preponderance of the evidence that “claims 14, 17, and 27 are unpatentable as obvious over Nissan and Wang,” claim 10 is “unpatentable as obvious over Nissan and Bendell,” claims 16, 30, 31, 40, and 48 are “unpatentable as obvious over Nissan and Aishin,” claims 18-20 are “unpatentable as obvious over Nissan, Aishin, and Wang,” and claims 32 and 39 are “unpatentable as obvious over Nissan, Aishin, and Niles.” Valeo North America. Inc. v. Magna Electronics, Inc., IPR2014-00220 Paper 59: Final Written Decision Dated: May 28, 2015 Patent: 7,859,565 B2 Before: Jameson Lee, Phillip J. Kauffman, and Matthew R. Clements W ritten by: Clements Related Proceedings: Magna Elecs., Inc. v. Valeo, Inc., No. 2:13-cv-11376 (E.D. Mich.); IPR2014-01203; IPR2014-00221 (U.S. Patent No. 7,991,522 B2), IPR2014-00222 (U.S. Patent No. 8,386,114 B2), IPR2014-00223 (U.S. Patent No. 8,386,114 B2), IPR2014-00227 (U.S. Patent No. 7,877,175 B2), and IPR2014-00228 (U.S. Patent No. 7,877,175 B2) .