throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 39
`Entered: June 25, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE US LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INCORPORATED,
`Patent Owner.
`____________
`
`Case IPR2014-00261
`Patent 7,339,149 B1
`____________
`
`
`
`Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`
`A.
`
`Background
`
`I. INTRODUCTION
`
`Petitioner, TRW Automotive US LLC, filed a corrected Petition
`
`(Paper 17, “Pet.”)1 to institute an inter partes review of claims 1–5, 7, 8, 13,
`
`and 41 of U.S. Patent No. 7,339,149 B1 (Ex. 1002, “the ’149 patent”)
`
`pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Magna Electronics Inc.,
`
`subsequently filed a Preliminary Response (Paper 7, “Prelim. Resp.”). On
`
`June 26, 2014, we instituted an inter partes review of claims 1–5, 7, 8, and
`
`13 on three grounds of unpatentability (Paper 19, “Dec. on Inst.”).
`
`After institution, Patent Owner filed a Patent Owner Response (Paper
`
`25, “PO Resp.”), and Petitioner filed a Reply (Paper 29, “Reply”).
`
`An oral hearing was held on February 18, 2015. A transcript of the
`
`hearing is included in the record. Paper 38 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 1–5, 7, 8, and 13 of the ’149
`
`patent are unpatentable.
`
`B.
`
`The ’149 Patent
`
`The ’149 patent, titled “Vehicle Headlight Control Using Imaging
`
`Sensor,” issued on March 4, 2008. The ’149 patent describes a system for
`
`“controlling [a] vehicle’s headlamps in response to sensing the headlights of
`
`oncoming vehicles and taillights of leading vehicles.” Ex. 1002, 1:33–35.
`
`
`1 Paper 17 is a corrected Petition for inter partes review filed May 9, 2014.
`The original Petition for inter partes review (Paper 1) was accorded a filing
`date of December 17, 2013. See Papers 3, 16.
`
`
`
`
`2
`
`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`According to the ’149 patent, prior attempts at automatic vehicle headlight
`
`controls included a single light sensor, wherein the headlights were dimmed
`
`in response to sensed light exceeding a threshold. Id. at 1:50–53. The ’149
`
`patent states that such systems are ineffective at detecting oncoming
`
`headlights at a distance and detecting taillights of leading vehicles. Id. at
`
`1:54–62.
`
`The ’149 patent describes vehicle headlight dimming control 12
`
`comprising imaging sensor module 14, imaging control circuit or digital
`
`signal processor 13, and vehicle lighting control logic module 16. Id. at
`
`3:54–58; Fig. 2. Imaging sensor module 14 includes optical device 36, light
`
`sensing array 38, and spectral separation device 40 disposed between optical
`
`device 36 and light sensing array 38. Id. at 4:32–37; Fig. 2. Imaging sensor
`
`module 14 may be mounted to, or near, the vehicle’s windshield via bracket
`
`34. Id. at 4:13–15; Fig. 2. This positioning provides an interior location that
`
`substantially eliminates environmental dirt and moisture problems and
`
`provides a relatively clear view forward of the vehicle. Id. at 4:16–20.
`
`Light sensing array 38 includes a plurality of photosensor elements 42
`
`arranged in a matrix. Id. at 4:43–45, Fig. 4. Digital signal processor 13,
`
`which receives output 56 from light sensing array 38, includes taillight
`
`detection circuit 76 and headlight detection circuit 78. Id. at 4:64–5:1, Fig.
`
`3. Taillight detection circuit 76 detects red light sources above a particular
`
`threshold, and headlight detection circuit 78 detects white light sources
`
`above a particular threshold. Id. at 5:12–30. Thus, “the control identifies
`
`light sources that are either oncoming headlights or leading taillights by
`
`identifying such light sources according to their spectral makeup.” Id. at
`
`2:50–52.
`
`
`
`
`3
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`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`
`Vehicle lighting control logic module 16 receives input 20 from
`
`digital signal processor 13. Id. at 4:6–7, Fig. 2. Vehicle lighting control
`
`logic module 16 responds to the input by switching headlights 18 to an
`
`appropriate mode. Id. at 5:57–59. For instance, the headlights might be
`
`switched from high-beam mode to low-beam mode in response to detecting
`
`oncoming headlights. Id. at 7:47–50.
`
`C.
`
`Illustrative Claims
`
`Of the challenged claims in the ’149 patent, claims 1 and 7 are
`
`independent. Claims 2–5, 8, and 13 depend, directly or indirectly, from
`
`claim 1, which is reproduced below:
`
`A control system for automatically controlling the
`1.
`state of the headlamps of a controlled vehicle, said control system
`comprising:
`
`an optical system for imaging external sources of light
`within a predetermined field of view; and
`
`an imaging processing system for processing images from
`said optical system and providing a control signal for controlling
`the state of the headlamps as a function of the output of pixels
`imaging the same spectral band of light.
`
`Ex. 1002, 12:49–58.
`
`Claim 7 recites:
`
`A control system for automatically controlling the
`7.
`state of the headlamps of a controlled vehicle, said control system
`comprising:
`
`an optical system for imaging external sources of light
`within a predetermined field of view, said optical system
`including an image array sensor containing a plurality of pixels;
`and
`
`an imaging processing system for processing images from
`said optical system and providing a control signal for controlling
`the state of the headlamps as a function of the output of pixels
`
`
`
`
`4
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`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`
`imaging the same spectral band of light, wherein said optical
`system is further configured to spatially segregate light sources
`having different spectral compositions on said pixel image array
`sensor.
`
`Ex. 1002, 13:7–20.
`
`D.
`
`Prior Art
`
`The pending grounds of unpatentability in this inter partes review are
`
`based on the following prior art:
`
`1. Japanese Kokai Application No. S62-131837, published
`June 15, 1987 (“Yanagawa”) (Ex. 1005)2;
`
`2. U.S. Patent No. 4,521,804, issued June 4, 1985
`(“Bendell”) (Ex. 1006);
`
`3. Oliver Vellacott, CMOS in camera, IEE Review, 111–
`114 (May 1994) (“Vellacott”) (Ex. 1007);
`
`4. U.S. Patent No. 4,758,883, issued July 19, 1988
`(“Kawahara”) (Ex. 1008); and
`
`5. U.S. Patent No. 5,075,768, issued December 24, 1991
`(“Wirtz”) (Ex. 1009).
`
`E.
`
`Pending Grounds of Unpatentability
`
`We instituted the instant inter partes review on the following grounds
`
`of unpatentability:
`
`
`2 Petitioner’s Exhibit 1005 contains both the Japanese patent document and an
`English translation of the document; Petitioner provided an affidavit attesting
`to the accuracy of the translation. See Ex. 1005; 37 C.F.R. § 42.63(b). Our
`references to Yanagawa in this decision refer to the English translation.
`
`
`
`
`5
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`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`
`References
`
`Yanagawa and Bendell
`
`Yanagawa, Bendell, and
`Vellacott
`Yanagawa, Bendell, and
`Wirtz
`
`Dec. on Inst. 28–29.
`
`Basis
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claim(s) Challenged
`
`1–4, 7, and 8
`
`5
`
`13
`
`A.
`
`Claim Construction
`
`II. ANALYSIS
`
`Petitioner contends, and Patent Owner does not dispute, that the ’149
`
`patent has expired. Pet. 1. The Board’s interpretation of the claims of an
`
`expired patent is similar to that of a district court’s review. See In re
`
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). We are guided, therefore,
`
`by the principle that the words of a claim “are generally given their ordinary
`
`and customary meaning” as understood by a person of ordinary skill in the
`
`art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312-13 (Fed. Cir. 2005) (en banc). “In determining the meaning of
`
`the disputed claim limitation, we look principally to the intrinsic evidence of
`
`record, examining the claim language itself, the written description, and the
`
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`
`415 F.3d at 1312–17).
`
`The Office interprets limitations arising under 35 U.S.C. § 112, sixth
`
`paragraph, in light of the corresponding structure, material, or acts described
`
`in the specification. In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir.
`
`1994) (“[P]aragraph six applies regardless of the context in which the
`
`interpretation of means-plus-function language arises, i.e., whether as part of
`
`
`
`
`6
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`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`a patentability determination in the PTO or as part of a validity or
`
`infringement determination in a court.”). The sixth paragraph of § 112 states
`
`that a claim limitation expressed in means-plus-function language “shall be
`
`construed to cover the corresponding structure . . . described in the
`
`specification and equivalents thereof.”3
`
`1. “configured to spatially segregate light sources having different
`spectral compositions on said pixel image array sensor” (Claim 7)
`
`In the Decision on Institution, we construed the phrase “configured to
`
`spatially segregate light sources having different spectral compositions on
`
`said pixel image array sensor” to mean that the claimed optical system is
`
`configured for distributing light across the pixel image array sensor, and that
`
`the structure may include at least mirrors with dichroic surfaces or prisms.
`
`Dec. on Inst. 7–8.
`
`Patent Owner argues that the Board’s interpretation is inconsistent
`
`with the language of both claim 7 and the Specification of the ’149 patent.
`
`PO Resp. 6. Patent Owner supports its argument with the Declaration of
`
`Matthew A. Turk, Ph.D. (Ex. 2032).
`
`Patent Owner argues that this phrase “should be construed to mean
`
`that the system is configured to segregate light sources having different
`
`spectral compositions onto a single or common image array sensor,” such
`
`that the limitation means “different spectral compositions (i.e., the likes of
`
`red, green, and blue light) are directed onto a single or common imaging
`
`array sensor.” Id. at 7 (citing Ex, 2032 ¶¶ 40–42).
`
`3 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112, sixth paragraph,
`as 35 U.S.C. § 112(f). Because the ’149 patent has a filing date prior to
`September 16, 2012, the effective date of the AIA, we refer to the pre-AIA
`version of 35 U.S.C. § 112.
`
`
`
`
`7
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`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`
`In support of this position, Patent Owner asserts:
`
`The language of claim 7 is directed towards embodiments
`having a filter (40a/b) for filtering light having different
`spectral compositions onto a single image array sensor 38.
`Claim 7 is not directed towards embodiments having a
`dichroic mirror or prisms and multiple image array sensors
`each imaging a respective single spectral composition of
`light.
`
`Id. at 8–9 (citing Ex. 2032 ¶ 42). Based on this assertion, Patent Owner
`
`argues claim 7 is consistent with the portions of the Specification that
`
`describe filter elements that direct light spectra onto a single or common
`
`“image array sensor,” but is contrary to the portions that describe the use of
`
`dichroic mirrors or prisms that separate and direct different spectral
`
`compositions onto different arrays designed to detect different spectral
`
`compositions of light. Id. at 9. According to Patent Owner, “[t]his
`
`distinction renders the Board’s claim construction of claim 7 inconsistent
`
`with the specification of the ’149 Patent.” Id.
`
`Petitioner replies that Patent Owner is proposing to insert the wording
`
`“single or common” into the claim construction where no such language is
`
`found in claim 7. Reply 2. Petitioner also argues that our preliminary
`
`construction is “fully consistent” with the Specification and does not
`
`contradict the language of claim 7. Id. at 4–5.
`
`We agree with Petitioner in part and Patent Owner in part. First,
`
`Petitioner is correct that the claim is not limited to a single image array
`
`sensor. Claim 7 recites “an image array sensor,” not a “single” image array
`
`sensor. Ex. 1002, 13:12; see KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d
`
`1351, 1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that an
`
`indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or
`
`
`
`
`8
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`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`more’ in open-ended claims containing the transitional phrase
`
`‘comprising.’”). Patent Owner’s argument that claim 7 is “directed” to a
`
`particular embodiment employing a single image array sensor is not
`
`persuasive because it is inconsistent with the language of the claim and
`
`essentially seeks to improperly read limitations from the Specification into
`
`the claim. See In re Am. Academy of Sciences Tech. Ctr., 367 F.3d 1359,
`
`1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a
`
`claim from the preferred embodiment described in the specification, even if
`
`it is the only embodiment described, absent clear disclaimer in the
`
`specification.”).
`
`Second, Patent Owner is correct that light sources must be spatially
`
`segregated onto a common pixel image array sensor. Claim 7 recites that the
`
`optical system is “configured to spatially segregate light sources having
`
`different spectral compositions on said pixel image array sensor” (emphasis
`
`added). Thus, at least two light sources must be spatially segregated on the
`
`same image array sensor.
`
`The parties’ dispute, however, is really over the interpretation of
`
`“image array sensor.” Patent Owner’s position appears to be that the term
`
`excludes the use of different light sensing arrays with light segregated by
`
`dichroic mirrors and prisms, as shown in Figure 6 of the ’149 patent. PO
`
`Resp. 7–9. Petitioner, on the other hand, believes that an “image array
`
`sensor” may have multiple contiguous arrays. Reply 2–5.
`
`The term “image array sensor” appears in the claims of the ’149
`
`patent but is not described in the Specification.4 The ’149 patent discloses
`
`imaging sensor module 14, which includes optical device 36, array 38 of
`
`
`4 The Abstract of the ’149 patent uses the term “imaging array sensor.”
`
`9
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`

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`IPR2014-00261
`Patent 7,339,149 B1
`
`photon-accumulating light sensors (also referred to as light-sensing array
`
`38), and spectral separation device 40 disposed between optical device 36
`
`and array 38. Ex. 1002, 4:32–37, Fig. 2. Spectral separation device 40,
`
`which may be a filter array, separates light from the scene forward of the
`
`vehicle into a plurality of spectral bands. Id. at 4:34–36.
`
`Importantly, however, claim 7 does not recite an “array”; it recites an
`
`“image array sensor.” The Specification states that Figure 5 is a “block
`
`diagram of an imaging sensor,” and Figure 6 is “an alternative embodiment
`
`of an imaging sensor.” Id. at 3:35–36. The sensor depicted in Figure 5
`
`includes a single photosensor array 38a, whereas the sensor depicted in
`
`Figure 6 includes multiple photosensor arrays 38b. Id. at 6:1–10, 8:38–41.
`
`In yet another embodiment, “imaging sensor module 14c includes three
`
`light-sensing arrays (not shown) and a spectral separation device overlying
`
`the light-sensing arrays which directs spectral bands to different arrays.” Id.
`
`at 8:56–60. Thus, we do not see any basis in the Specification to limit the
`
`claimed “image array sensor” to a sensor with just one array. See also Reply
`
`3 (citing for the ordinary meaning of “sensor” a dictionary definition that
`
`would encompass a device with multiple components, Ex. 1012 (renumbered
`
`as Ex. 1057)).5
`
`Patent Owner’s arguments regarding the Specification pertain to
`
`element 38, which Patent Owner calls “image array sensor 38.” PO Resp.
`
`7–8. The Specification, however, never refers to element 38 as an “image
`
`array sensor.” The Specification calls it an “array,” “light-sensing array,” or
`
`
`5 Petitioner filed Exhibits 1012–14 on April 17, 2014, and then filed different
`documents also numbered as Exhibits 1012–14 on December 15, 2014.
`To ensure a clear record, we renumber the documents filed on December 15,
`2014 as Exhibits 1057–59.
`
`
`
`
`10
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`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`“photosensor array.” See, e.g., Ex. 1002, 4:32–48, 5:2–7, 6:1–17 (“single
`
`photosensor array 38a”), 8:30–55 (“two or more pairs of photosensor arrays
`
`38b”). Patent Owner’s position would require us to read out “sensor” from
`
`the claim, when Patent Owner deliberately chose that language instead of
`
`merely reciting an “array.”6
`
`Accordingly, on the full record, we maintain our construction of
`
`“configured to spatially segregate light sources having different spectral
`
`compositions on said pixel image array sensor” to mean that the claimed
`
`optical system is configured for distributing light across the pixel image
`
`array sensor, and that the structure may include at least mirrors with dichroic
`
`surfaces or prisms. We also construe “image array sensor” to mean a device
`
`that senses a two-dimensional image, which may comprise a single light
`
`sensing array or multiple light sensing arrays.
`
`2. “as a function of the output of pixels imaging the same
`spectral band of light” (Claims 1 and 7)
`
`In the Decision on Institution, we interpreted the phrase “as a function
`
`of the output of pixels imaging the same spectral band of light” to mean “as
`
`a function of the output of pixels imaging the same color band.” Dec. on
`
`Inst. 8–9. The parties do not dispute this interpretation, and we see no
`
`reason to modify this interpretation in light of the record developed at trial.
`
`
`6 For example, claim 15 recites “wherein said image processing system
`includes at least two photosensor arrays, and wherein said optical system
`comprises at least two lenses, one of said at least two lenses being configured
`to image onto one of said at least two photosensor arrays, and the other of said
`at least two lenses being configured to image onto the other of said at least
`two photosensor arrays.”
`
`
`
`
`11
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`IPR2014-00261
`Patent 7,339,149 B1
`
`
`3. “means for filtering infrared light from said external sources
`of light” (Claim 13)
`
`In the Decision on Institution, we interpreted “means for filtering
`
`infrared light from said external sources of light” as follows:
`
`Function: “filtering infrared light from said external sources of light”;
`
`Corresponding structure: an infrared filter.
`
`Dec. on Inst. 9–10. The parties do not dispute this interpretation, and we see
`
`no reason to modify this interpretation in light of the record developed at
`
`trial.
`
`B.
`
`Asserted Obviousness of Claims 1–4, 7, and 8 over Yanagawa
`and Bendell
`
`Petitioner asserts that claims 1–4, 7, and 8 are unpatentable under 35
`
`U.S.C. § 103(a) over the combination of Yanagawa and Bendell. Pet. 11–
`
`19, 22–28.7,8 To support its assertions, Petitioner relies on the Declarations
`
`of Jeffrey A. Miller, Ph.D. (Exs. 1011, 1059). Patent Owner disagrees with
`
`Petitioner’s assertions. PO Resp. 10–24.
`
`A claim is unpatentable under 35 U.S.C. § 103 if 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
`
`
`7 We note that on pages 3–4 of the Petition, Petitioner indicates that claims 1–
`4 and 8 are “anticipated” by Yanagawa in view of Bendell under 35 U.S.C.
`§ 102(a) (pre-AIA). We determined that this identification is a typographical
`error. Dec. on Inst. 16. Petitioner also mistakenly references 35 U.S.C.
`§ 102(a) (pre-AIA) in discussing its obviousness ground on page 11 of the
`Petition.
`8 In the Petition, Petitioner asserted that claim 7 is unpatentable under 35
`U.S.C. § 103(a) over either (1) Yanagawa and Bendell or (2) Yanagawa,
`Bendell, and Kawahara. Pet. 22–28. We did not institute inter partes review
`of claim 7 based on the combination of Yanagawa, Bendell, and Kawahara.
`See Dec. on Inst. 24–25.
`
`
`
`
`12
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`
`invention was made to a person having ordinary skill in the art to which the
`
`subject matter pertains. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
`
`(2007). In the Petition, Petitioner proposed that a person having ordinary
`
`skill in the art of the ’149 patent at the time of the invention would have had
`
`at least the qualifications of, or equivalent to, either (1) a master’s degree in
`
`electrical engineering or computer science, with course work or research in
`
`vision systems, or (2) an undergraduate degree in electrical engineering or
`
`computer science with at least two years of work making optical vision
`
`systems. Pet. 13 (citing Ex. 1011 ¶ 14). Patent Owner argued that this
`
`definition was incorrect because it failed to make any mention of expertise
`
`in vehicle technologies. Prelim. Resp. 27. In our Decision on Institution,
`
`we found Patent Owner’s argument unpersuasive because Patent Owner did
`
`not explain how the allegedly incorrect definition led to an incorrect
`
`obviousness analysis. Dec. on Inst. 17. The parties have not disputed this
`
`definition further. Based on our review of the record developed during trial,
`
`including the disclosure of the ’149 patent and the cited prior art, and the
`
`testimony of the parties’ declarants, we adopt the above-mentioned
`
`definition of a person having ordinary skill in the art for the purposes of this
`
`Final Written Decision.
`
`1.
`
`Overview of Yanagawa
`
`Yanagawa discloses a “traveling vehicle recognition device capable,
`
`for example, of automatically controlling headlight beams to high and low
`
`beams according to the state of whether there is a vehicle ahead.” Ex. 1005,
`
`2. The device includes color television camera 11 mounted to image the
`
`forward direction of vehicle 12. Id. A video signal from television camera
`
`11 is supplied to decoder 13, which separates the video signal into R (red), G
`
`
`
`
`13
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`

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`(green), and B (blue) color image signals that are supplied to image signal
`
`processor 14. Id. Image signal processor 14 processes the color image
`
`signals to recognize or detect the presence of taillights or headlights within
`
`the imaged video. Id. at 2–3.
`
`2.
`
`Overview of Bendell
`
`Bendell discloses a television camera including four-port color-
`
`splitting prism 22 and four solid-state imagers: blue-responsive imager 14,
`
`red-responsive imager 16, and green-responsive imagers 18, 20. Ex. 1006,
`
`3:23–25, 46–52, Fig. 1a. Bendell further discloses that each “solid-state
`
`imager may be of the CCD [charge coupled device] type.” Id. at 3:53.
`
`3.
`
`Claim 1
`
`Petitioner contends that Yanagawa discloses all elements of the
`
`control system of claim 1 except for the use of “pixels.” Pet. 13. In
`
`particular, Petitioner asserts that Yanagawa’s color television camera 11
`
`corresponds to the claimed optical system for imaging external sources of
`
`light within a predetermined field of view. Id. at 13–14. Petitioner also
`
`asserts that “Yanagawa describes an imaging processing system utilizing
`
`images from ‘television camera 11’ that supplies images to ‘a decoder 13’
`
`that ‘forms R (red), G (green) and B (blue) color image signals based on the
`
`video signal,’” and decoder 13 “supplies the R, [G] and B color image
`
`signals to an image signal processor 14,” wherein the R, G, and B signals
`
`constitute separate images in the same spectral band of light. Id. at 14
`
`(quoting Ex. 1005, 2). Petitioner further asserts that image signal processor
`
`14 “operates on these respective images to provide a control signal for
`
`controlling the state of the headlamps.” Id. at 14–15 (quoting Ex. 1005, 2–
`
`3). Petitioner indicates that Yanagawa does not disclose expressly a
`
`
`
`
`14
`
`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`television camera that uses “pixels,” but asserts that Bendell discloses a
`
`television camera having “pixels.” Id. at 15 (citing Ex. 1006, Abstract).
`
`In view of these assertions, Petitioner contends that “the substitution of
`
`the television camera of Bendell for the unspecified type of television camera
`
`of Yanagawa, is an equivalent (and unpatentable) interchange of television
`
`cameras.” Id. (referring to KSR). As a further reason for combining the
`
`references, Petitioner submits that Bendell’s camera has “the advantages of
`
`long life, light weight, ruggedness, signal-to-noise and low power
`
`consumption [which] make the solid-state imager very attractive for color
`
`camera use.” Id. at 16 (quoting Ex. 1006, 2:4–7).
`
`Patent Owner argues that a person of ordinary skill in the art would
`
`not have found claim 1 obvious based on the combination of Yanagawa and
`
`Bendell. PO Resp. 10–11. More specifically, Patent Owner contends that
`
`the proposed modification (1) would render Yanagawa’s system
`
`unsatisfactory for its intended purpose (id. at 11–16), (2) would change
`
`Yanagawa’s principles of operation (id. at 17–19), and (3) relies on
`
`impermissible hindsight (id. at 19–20). Patent Owner also contends the
`
`proposed modification would not have been obvious because Bendell
`
`teaches away from the combination with Yanagawa. Id. at 20–21. All of
`
`these arguments are based on Patent Owner’s assertion that Bendell’s CCD
`
`imager has inferior resolution relative to Yanagawa’s television camera. Id.
`
`at 13 (citing Ex. 1006, 2:2–4, Ex. 2032 ¶ 26); id. at 18 (citing Ex. 2032
`
`¶ 32); id. at 19; id. at 20–21 (citing Ex. 2032 ¶¶ 23–26, 29). For example,
`
`Patent Owner argues “[r]eplacing a sensor having a superior resolution (the
`
`analog imaging sensor in Yanagawa) with a sensor having inferior resolution
`
`would tend to render Yanagawa’s system incapable of accurately
`
`
`
`
`15
`
`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`recognizing headlights and taillights.” Id. at 13–14 (citing Ex. 2032 ¶¶ 24,
`
`26, 29).
`
`Petitioner asserts that Patent Owner’s argument based on the allegedly
`
`inferior resolution of CCD imagers lacks credibility. Reply 9. For example,
`
`Petitioner notes that Dr. Turk responded “I’m not sure what they were at that
`
`time,” when asked what were the available resolutions for CCD imagers in
`
`1996. Id. (citing Ex. 1058, 127:16–24). Relying on the testimony of Dr.
`
`Miller, Petitioner argues Dr. Turk is incorrect regarding the resolution issue.
`
`Id. (citing Ex. 1059 ¶¶ 30–38).
`
`We are not persuaded by Patent Owner’s arguments. Patent Owner
`
`and Dr. Turk rely on Bendell’s statement that “discrete sensing sites cause
`
`resolution of the CCD imager to be limited by comparison with that of a
`
`modern camera tube” as showing that Bendell’s CCD imager has inferior
`
`resolution. PO Resp. 13 (citing Ex. 1006, 2:2–4); Ex. 2032 ¶ 23 (citing Ex.
`
`1006, 2:2–4). This passage of Bendell, however, continues with “but the
`
`advantages of long life, light weight, ruggedness, signal-to-noise and low
`
`power consumption make the solid state imager very attractive for color
`
`camera use.” Ex. 1006, 2:4–7. Thus, taken in full context, we are not
`
`persuaded that Bendell’s description of limited resolution, with five
`
`countervailing advantages making a CCD imager “very attractive,” would
`
`have caused a person of ordinary skill in the art not to consider Bendell. A
`
`given course of action often has simultaneous advantages and disadvantages,
`
`which does not necessarily obviate a reason to combine references. See
`
`Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
`
`2000) (“The fact that the motivating benefit comes at the expense of another
`
`benefit, however, should not nullify its use as a basis to modify the
`
`
`
`
`16
`
`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`disclosure of one reference with the teachings of another. Instead, the
`
`benefits, both lost and gained, should be weighed against one another.”).
`
`We are not persuaded that the disadvantage of limited resolution with
`
`solid-state imagers outweighs the advantages of long life, lighter weight, low
`
`power consumption, etc. In addition, regarding Patent Owner’s argument
`
`that the proposed modification would render Yanagawa’s system
`
`unsatisfactory for its intended purpose, Petitioner asserts that this “argument
`
`is premised upon an erroneous perspective that Yanagawa ‘must be
`
`understood to be a non-pixelated sensor.’” Reply 6 (quoting PO Resp. 12).
`
`According to Petitioner, Yanagawa teaches the use of a ‘television camera,’
`
`without distinguishing between pixelated (solid state) and non-pixelated
`
`(analog) forms of television cameras,” and Bendell, for example, expressly
`
`contemplated solid-state television cameras as an improvement to
`
`tube-based systems. Id. at 6–7. Petitioner also asserts that the proposed
`
`modification does not change Yanagawa’s basic principle of operation for
`
`similar reasons. Id. at 11–12. We find Petitioner’s assertions persuasive.
`
`For the above reasons, we do not agree that Bendell teaches away
`
`from the combination with Yanagawa or that the proposed modification
`
`would render Yanagawa’s system unsatisfactory for its intended purpose,
`
`change Yanagawa’s principles of operation, or require impermissible
`
`hindsight.
`
`After considering Petitioner’s and Patent Owner’s positions, as well as
`
`their supporting evidence, we determine that Petitioner has shown, by a
`
`preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over the combination of Yanagawa and Bendell.
`
`
`
`
`17
`
`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`
`4.
`
`Claims 2–4
`
`Claim 2 depends from claim 1, and further requires that “said optical
`
`system is configured to image light sources over a predetermined horizontal
`
`and vertical range defining said predetermined field of view.” Ex. 1002,
`
`12:59–62. Petitioner asserts that Yanagawa’s description of television
`
`camera 11 being “mounted and set up in the front of a vehicle 12 as shown
`
`in Fig. 2, for example, and . . . set so as to be able to image the forward
`
`direction of the vehicle 12, especially a vehicle 121 traveling ahead and a
`
`vehicle 122 traveling in the oncoming lane” inherently discloses the claimed
`
`configuration such that claim 2 is obvious. Pet. 17 (citing Ex. 1005, 2;
`
`Ex. 1011 ¶ 20). We are persuaded that, based on the cited disclosure in
`
`Yanagawa, one of ordinary skill in the art would have understood television
`
`camera 11 to image light sources over a predetermined horizontal and
`
`vertical range defining a predetermined field of view, as shown in Figures 2,
`
`5, and 6 of the reference, for example.
`
`Claim 3 depends from claim 2, and further requires the optical system
`
`be “fixed relative to said controlled vehicle.” Ex. 1002, 12:63–64.
`
`Petitioner argues that claim 3 is obvious because Yanagawa discloses
`
`television camera 11 may be mounted in a fixed position. Pet. 18 (citing
`
`Ex. 1005, 5; Ex. 1011 ¶ 22). Particularly, Yanagawa discloses:
`
`The television camera for imaging in the forward direction
`may be mounted at any location from which the forward
`direction can be imaged. The television camera may also
`be configured such that the mounting angle of the camera
`can be varied, such that, for example, the angle is
`automatically controlled in response to the angle of
`steering maneuvers.
`
`
`
`
`18
`
`

`

`IPR2014-00261
`Patent 7,339,149 B1
`
`Ex. 1005, 5 (emphasis added). We agree with Petitioner that, because the
`
`second sentence of this passage describes a variable camera mounting as an
`
`alternative to the mounting discussed in the first sentence, the first sentence
`
`suggests a fixed camera mounting.
`
`Claim 4 depends from claim 2, and further requires that the optical
`
`system include “an image array sensor containing a plurality of pixels.”
`
`Ex. 1002, 12:65–67. Petitioner argues that claim 4 is obvious because
`
`“Bendell describes the camera thereof where a ‘first imager coupled to the
`
`optical system responds

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