Trials@uspto.gov
`571-272-7822
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`Paper 19
`Entered: June 26, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE US LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 19
`Entered: June 26, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE US LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2014-00261
`Patent 7,339,149 B1
`
`
`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
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`U.S. Patent No. 7,339,149 B1 (Ex. 1002, “the ’149 patent”) pursuant to
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`35 U.S.C. §§ 311-319. Patent Owner Magna Electronics Inc. filed a
`
`Preliminary Response (Paper 7, “Prelim. Resp.”) opposing institution of
`
`review. We have jurisdiction under 35 U.S.C. § 314. For the reasons that
`
`follow, the Board has determined to institute an inter partes review.
`
`
`
`I. BACKGROUND
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a):
`
`THRESHOLD.—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and
`any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Petitioner challenges claims 1-5, 7, 8, 13, and 41 as unpatentable under
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`35 U.S.C. § 103(a). Pet. 11-39. For the reasons discussed below, we institute
`
`an inter partes review as to claims 1-5, 7, 8, and 13 on certain grounds and
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`deny the Petition as to claim 41.
`
`
`
`A. Related Matters
`
`Petitioner indicates that the ’149 patent is involved in a district court
`
`case, to which it is a party, titled Magna Electronics Inc. v. TRW Automotive
`
`
`1 Paper 17 is a corrected Petition for inter partes review, filed May 9, 2014.
`See Paper 16 (granting Petitioner’s motion to correct). The original Petition
`for inter partes review (Paper 1) has been accorded the filing date of
`December 17, 2013.
`
`
`
`
`2
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`IPR2014-00261
`Patent 7,339,149 B1
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`Holding Corp., No. 1:12-cv-00654-PLM (W.D. Mich.). Pet. 5.
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`
`
`B. The ’149 Patent (Ex. 1002)
`
`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.
`
`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
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`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
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`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
`
`
`
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`3
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`IPR2014-00261
`Patent 7,339,149 B1
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`detection circuit 76 and headlight detection circuit 78. Id. at 4:64-5:1, Fig. 3.
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`Taillight detection circuit 76 detects red light sources above a particular
`
`threshold, and headlight detection circuit 78 detects white light sources above
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`a particular threshold. Id. at 5:12-30. Thus, “the control identifies light
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`sources that are either oncoming headlights or leading taillights by identifying
`
`such light sources according to their spectral makeup.” Id. at 2:50-52.
`
`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
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`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 Claim
`
`Claim 1 of the ’149 patent is illustrative of the claims at issue:
`
`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.
`
`
`
`D. The Prior Art
`
`Petitioner relies on the following prior art:
`
`
`
`
`4
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`IPR2014-00261
`Patent 7,339,149 B1
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`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. The Asserted Grounds
`
`Petitioner challenges claims 1-5, 7, 8, 13, and 41 of the ’149 patent on
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`the following grounds:
`
`References
`
`Yanagawa and Bendell
`
`Basis
`
`§ 103
`
`Claim(s) Challenged
`
`1-4 and 8
`
`Yanagawa, Bendell, and
`Vellacott
`Yanagawa, Bendell, and
`Kawahara
`Yanagawa, Bendell, and
`Wirtz
`
`
`§ 103
`
`5
`
`§ 103
`
`7 and 41
`
`§ 103
`
`13
`
`F. Claim Interpretation
`
`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
`
`
`2 Petitioner’s Exhibit 1005 contains both the Japanese patent document and an
`English translation of the document; Petitioner has 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.
`
`
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`5
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`expired patent is similar to that of a district court’s review. See In re Rambus,
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`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,
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`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 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
`
`
`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.
`
`
`
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`6
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`IPR2014-00261
`Patent 7,339,149 B1
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`
`For purposes of this decision, we construe certain claim limitations as
`
`follows.
`
`1. “configured to spatially segregate light sources having different
`spectral compositions on said pixel image array sensor” (Claim 7)
`
`Petitioner argues that the phrase “configured to spatially segregate light
`
`sources having different spectral compositions on said pixel image array
`
`sensor” should be construed to include “any structure that is configured for
`
`distributing light across a sensor array including at least mirrors with dichroic
`
`surfaces or prisms.” Pet. 8. As support for its proposed interpretation,
`
`Petitioner indicates the Specification of the ’149 patent discloses “providing
`
`an imaging sensor which divides the scene forward of the vehicle into a
`
`plurality of spatially separated sensing regions” and “light sources are
`
`identified . . . according to their spatial distribution across the regions.” Id. at
`
`7 (quoting Ex. 1002, 2:24-27, 2:55-58). Petitioner also contends that
`
`“‘[s]eparation devices for separating light from the scene forward of vehicle
`
`10 into a plurality of spectral bands’ may include a ‘filter array’” and
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`“[s]patial separation may also be used to distribute light across one or more
`
`sensor arrays by use of ‘dichroic mirrors or prisms.’” Id. at 8 (quoting Ex.
`
`1002, 4:34-36, 8:60-63).
`
`Patent Owner does not propose an interpretation of this claim phrase,
`
`but argues that Petitioner conflates the broadest reasonable interpretation
`
`standard, applicable to unexpired patents, and the above-described standard
`
`applicable to expired patents. Prelim. Resp. 31 (citing Pet. 7). We disagree
`
`with this argument. Petitioner explicitly states that “‘[o]rdinary meaning’ is
`
`the applicable claim construction standard for expired patents, as is the case
`
`here.” Pet. 7 (emphasis added). Petitioner also cites MPEP § 2258(I)(G),
`
`
`
`
`7
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`IPR2014-00261
`Patent 7,339,149 B1
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`which addresses the claim construction standard used by the Office in
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`reexamination proceedings involving claims of an expired patent. Id.
`
`Although Petitioner’s intent in quoting language regarding the broadest
`
`reasonable interpretation standard from the Office Patent Trial Practice Guide
`
`(see id.) is not clear, we do not find that inclusion of the quotation fatally
`
`confuses Petitioner’s explicit statement that the Board’s standard for expired
`
`patents applies.
`
`Based on the record before us, we are persuaded by Petitioner’s
`
`proposed interpretation. We, thus, construe 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.
`
`2. “as a function of the output of pixels imaging the same
`spectral band of light” (Claims 1 and 7)
`
`Petitioner does not propose an interpretation of the phrase “as a
`
`function of the output of pixels imaging the same spectral band of light.”
`
`Patent Owner submits that the phrase “should be construed to mean that the
`
`control signal is provided as a function of pixels imaging the same or
`
`substantially the same color.” Prelim. Resp. 33. In support of this
`
`interpretation, Patent Owner asserts “the plain meaning of ‘pixels imaging the
`
`same spectral band of light’ in view of the intrinsic evidence is ‘pixels
`
`imaging the same color or substantially the same color,’” without specifying
`
`any specific intrinsic evidence. Id. As such, Patent Owner essentially
`
`proposes replacing “spectral band of light” with “color” and “the same” with
`
`
`
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`8
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`Patent 7,339,149 B1
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`“the same or substantially the same.” Based on the record before us, we are
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`persuaded in part by Patent Owner’s proposed interpretation.
`
`As to Patent Owner’s proposed substitution of “color” for the recited
`
`“spectral band of light,” the ’149 patent describes “a spectral separation
`
`device [such as filter array 40] for separating light from the scene forward of
`
`vehicle 10 into a plurality of spectral bands” (Ex. 1002, 4:34-36 (emphasis
`
`added)), and further states “spectral filter array 40a includes alternating
`
`spectrum filter elements for exposing adjacent pixels to different regions of
`
`the electromagnetic spectrum in the red band or green band or blue band” (id.
`
`at 6:4-7 (emphasis added)). Thus, Patent Owner’s suggestion that “spectral
`
`band of light” is equivalent to “color” is consistent with the Specification of
`
`the ’149 patent.
`
`We do not agree, however, that the interpretation should include pixels
`
`imaging “substantially” the same color. Patent Owner does not provide any
`
`reasoning as to why “the same spectral band of light” would be broadened to
`
`include “the same or substantially the same color,” or explain how
`
`“substantially the same color” would be measured. Accordingly, for the
`
`purposes of this decision, we interpret “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.”
`
`3. “means for filtering infrared light from said external sources
`of light” (Claim 13)
`
`Neither party proposes an interpretation of this phrase. Petitioner does
`
`not contend that this language invokes 35 U.S.C. § 112, sixth paragraph.
`
`However, “[u]se of the word ‘means’ in claim language creates a presumption
`
`that § 112 ¶ 6 applies.” TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259
`
`
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`9
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`IPR2014-00261
`Patent 7,339,149 B1
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`(Fed. Cir. 2008). Petitioner has not rebutted this presumption, and we do not
`
`read the “means” limitation in claim 13 as reciting sufficient structure. See
`
`Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir.
`
`2000) (stating the presumption falls “if the claim itself recites sufficient
`
`structure to perform the claimed function”). We, therefore, construe the
`
`phrase as a means-plus-function limitation.
`
`We have not been directed by either party to a description in the
`
`Specification of the ’149 patent of structure that performs the function of
`
`filtering infrared light from external sources of light. The only specific
`
`description of infrared filtering in the ’149 patent is a mention of using
`
`infrared filtering in prior art vehicle headlight dimming controls to overcome
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`deficiencies in distinguishing between headlights and taillights. Ex. 1002,
`
`1:50-67. The ’149 patent describes generally spectral filters for filtering light
`
`of certain wavelengths from external sources of light. See, e.g., id. at 6:1-10,
`
`8:38-55. Accordingly, for the purpose of this decision, we construe “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.
`
`Both parties have the opportunity to direct the Board to the specific
`
`portions of the Specification they believe describe the structure that performs
`
`the function of filtering infrared light from external sources of light. See Med.
`
`Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003)
`
`(“The duty of a patentee to clearly link or associate structure with the claimed
`
`function is the quid pro quo for allowing the patentee to express the claim in
`
`terms of function under section 112, paragraph 6.”); see also 37 C.F.R.
`
`§ 42.104(b)(3) (“Where the claim to be construed contains a means-plus-
`
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`10
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`Patent 7,339,149 B1
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`function . . . limitation . . . the construction of the claim must identify the
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`specific portions of the specification that describe the structure, material, or
`
`acts corresponding to each claimed function.”).
`
`
`
`II. ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability and
`
`Patent Owner’s arguments in the Preliminary Response to determine whether
`
`Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
`
`
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`A. 325(d) Argument4
`
`As in initial matter, Patent Owner contends that the Petition should be
`
`denied under 35 U.S.C. § 325(d), because Petitioner “has merely recycled
`
`applied references and arguments that were previously overcome both at the
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`Office and during a highly contested proceeding at the Board involving the
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`Patent Owner and a third party.” Prelim. Resp. 11. In particular, Patent
`
`Owner argues that Yanagawa was “considered by the Board during an
`
`interference proceeding [Interference No. 105,325] involving the application
`
`that resulted in the ’149 patent and an issued patent owned by a third party,”
`
`and “the Board soundly rejected [the third party’s] attempt to assert
`
`anticipation of prosecution claim 94 [(which corresponds to issued claim 41)]
`
`
`4 Patent Owner states “35 U.S.C. § 315(d) provides that ‘[i]n determining
`whether to institute or order a proceeding . . . the Director may take into
`account whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented to the
`Office.’” Prelim. Resp. 11. The quoted language, however, appears in
`35 U.S.C. § 325(d), rather than § 315(d). We take Patent Owner’s reference
`to § 315(d) to be a typographical error and treat this argument as being based
`on § 325(d).
`
`
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`11
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`Patent 7,339,149 B1
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`by Yanagawa.” Id. at 12-13 (citing Ex. 1004, 1004-0142–1004-0144). This
`
`argument is not persuasive, because the prior proceeding involved a third
`
`party asserting that a claim was anticipated by Yanagawa, whereas Petitioner
`
`in this proceeding is asserting that certain claims would have been obvious
`
`over Yanagawa in combination with other references. As such, Petitioner is
`
`making substantially different arguments than those raised in the prior
`
`proceeding.
`
`We also are not persuaded by Patent Owner’s argument that the Petition
`
`should be denied under 35 U.S.C. § 325(d), because Yanagawa was cited in
`
`an Information Disclosure Statement and acknowledged by the Examiner
`
`during the prosecution of the application that resulted in the ’149 patent. Id. at
`
`13-14 (citing Ex. 1003, 1004-017–1004-037). Although the Examiner
`
`presumably was aware of Yanagawa, there is no evidence that Yanagawa was
`
`applied in any manner to any of the claims.
`
`Lastly, Patent Owner asserts that the secondary references relied on by
`
`Petitioner (Bendell, Vellacott, Kawahara, and Wirtz) are “merely cumulative”
`
`of references considered in the interference proceeding and ex parte
`
`prosecution. Id. at 14. Patent Owner particularly asserts, without explanation,
`
`that Bendell and Kawahara are cumulative of U.S. Patent No. 4,974,078,
`
`issued to Tsai (Ex. 2007), which was of record during the interference
`
`proceeding and ex parte prosecution. Id. at 15. Based on our review of Tsai
`
`and the secondary references relied on by Petitioner, we are not convinced
`
`that the secondary references are “merely cumulative.”
`
`Based on the record before us at this stage of the proceeding, we
`
`decline to exercise our discretion to reject the Petition pursuant to 35 U.S.C.
`
`§ 325(d).
`
`
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`12
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`B. Asserted Ground Based on Yanagawa (Ex. 1004)
`and Bendell (Ex. 1005)
`
`Petitioner challenges claims 1-4 and 8 under 35 U.S.C. § 103(a) as
`
`unpatentable over Yanagawa and Bendell. Pet. 11-19.5 To support this
`
`assertion, Petitioner relies on the Declaration of Jeffrey A. Miller, Ph.D. (Ex.
`
`1011). We are persuaded that Petitioner has established a reasonable
`
`likelihood of prevailing on this ground for the reasons explained below.
`
`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
`
`(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.
`
`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-
`
`
`5 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). For reasons discussed more fully below, we presume this
`is a typographical error. Petitioner also mistakenly references 35 U.S.C.
`§ 102(a) (pre-AIA) in discussing its obviousness ground on page 11 of the
`Petition.
`
`
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`13
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`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.
`
`Claim 1 recites “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.” 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 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 Int’l Co. v. Teleflex Inc., 550 U.S. 398
`
`
`
`
`14
`
`
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`IPR2014-00261
`Patent 7,339,149 B1
`
`(2007)). 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).
`
`Regarding claims 2, 3, and 8, each depending directly or indirectly from
`
`claim 1, Petitioner contends that Yanagawa discloses the additional subject
`
`matter recited in each of these claims. Id. at 17-19. Regarding claim 4, which
`
`depends from claim 2, Petitioner contends that Bendell discloses the subject
`
`matter recited therein. Id. at 18.
`
`Upon review of Petitioner’s analysis, we are persuaded that Petitioner’s
`
`asserted ground of unpatentability of claims 1-4 and 8, based on the
`
`combination of Yanagawa and Bendell, has merit.
`
`Patent Owner presents several arguments against this ground of
`
`unpatentability. We address each in turn. First, Patent Owner argues that
`
`Petitioner’s challenge of claims 1-4 and 8 fails to meet the requirement of
`
`identifying the grounds for a challenge with “particularity” under 35 U.S.C.
`
`§ 312(a)(3), because the challenge “is so ambiguous that it is not even clear
`
`whether [Petitioner] is asserting an anticipation or obviousness challenge.”
`
`Prelim. Resp. 16. Specifically, Patent Owner argues that pages 3 and 11 of
`
`the Petition, as well as the claim chart on pages 16 and 17, appear to relate to
`
`anticipation by Yanagawa, but pages 4 and 11-19 of the Petition suggest that
`
`the asserted ground is based on obviousness. Id. at 16-17. Patent Owner
`
`further contends that the asserted ground is “insolubly vague and ambiguous,”
`
`because the ground, with respect to claim 4, entirely lacks a discussion of
`
`Yanagawa. Id. at 18.
`
`
`
`
`15
`
`
`
`IPR2014-00261
`Patent 7,339,149 B1
`
`
`It is true that the Petition contains some inconsistencies with respect to
`
`the basis for this asserted ground of unpatentability. Specifically, pages 3-4 of
`
`the Petition state that claims 1-4 and 8 are “anticipated” by Yanagawa in view
`
`of Bendell under “35 U.S.C. § 102(a) (pre-AIA),” and “35 U.S.C. § 102(a)
`
`(pre-AIA)” is mentioned again on page 11 of the Petition. In addition, the
`
`claim chart on pages 16 and 17 of the Petition fails to include the disclosures
`
`of Bendell upon which Petitioner is relying.
`
`Despite these flaws, however, Petitioner adequately has set forth its
`
`intent to challenge the claims on the basis of obviousness. For example, the
`
`heading for this asserted ground in the Petition states that claims 1-4 and 8 are
`
`“obvious.” Pet. 11; see also id. at 13, 17-19 (providing sub-headings stating
`
`individual claims would have been obvious). The Petition also discusses the
`
`legal standard for obviousness under 35 U.S.C. § 103(a), provides an analysis
`
`of the level of ordinary skill in the art, and provides a discussion of the
`
`respective disclosures of Yanagawa and Bendell and why one of ordinary skill
`
`in the art would have been led to combine the references. Id. at 11-19.
`
`Accordingly, we determine that Petitioner’s references to “anticipated” and
`
`“§ 102(a)” are typographical errors that do not render the Petition fatally
`
`ambiguous. Similarly, Petitioner’s failure to discuss Bendell in the claim
`
`chart on pages 16 and 17 of the Petition is a harmless omission, given that
`
`Petitioner explained its reliance on Bendell on pages 14 and 15.
`
`Regarding claim 4, Petitioner contends that Bendell discloses the
`
`subject matter recited therein. Id. at 18. Although not stated expressly as
`
`such, it is apparent that, in asserting that claim 4 is obvious, Petitioner is
`
`relying on the discussion of Yanagawa set forth in connection with parent
`
`claims 1 and 2 on pages 13-15 and 17 of the Petition.
`
`
`
`
`16
`
`
`
`IPR2014-00261
`Patent 7,339,149 B1
`
`
`For the above reasons, Patent Owner’s argument that the asserted
`
`ground is vague and ambiguous is not persuasive.
`
`In addition, Patent Owner argues that “[t]o the extent that anticipation
`
`of [claims 1-4 and 8] based on Yanagawa is asserted, [Petitioner] has failed to
`
`show where each limitation of at least independent claim 1 is found in
`
`Yanagawa.” Prelim. Resp. 20-21. Patent Owner also takes exception to
`
`Petitioner’s apparent allegation that Yanagawa’s camera inherently includes
`
`pixels. Id. at 21.
`
`These arguments are not persuasive. For the reasons discussed above,
`
`we determine that the Petition is not vague and ambiguous as to whether
`
`Petitioner is asserting an anticipation or obviousness challenge. Petitioner is
`
`not relying on anticipation as the basis for asserting any claim is unpatentable.
`
`Furthermore, despite asserting that pixels are “inherent to any camera,”
`
`Petitioner also states that “Yanagawa does not expressly mention the use of
`
`pixels in the television camera,” and thus relies on Bendell as disclosing a
`
`television camera having pixels “out of an abundance of caution.” Pet. 15.
`
`Thus, Petitioner suggests that Yanagawa’s camera inherently includes pixels
`
`but does not rely on this alleged inherent feature in asserting that the claims
`
`are unpatentable.
`
`Further, Patent Owner contends that Petitioner has failed to provide a
`
`correct definition of a person having ordinary skill in the art. Prelim. Resp.
`
`26-29. In particular, Patent Owner asserts Petitioner’s definition is flawed,
`
`because it “fails to make any mention of expertise in vehicle technologies.”
`
`Id. at 27. On this record, we are not persuaded by this argument, because
`
`Patent Owner has not explained how the allegedly incorrect definition leads to
`
`an incorrect obviousness analysis.
`
`
`
`
`17
`
`
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`IPR2014-00261
`Patent 7,339,149 B1
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`
`Next, Patent Owner argues that Petitioner has failed “to fully and
`
`properly consider the scope of the claims before applying the asserted
`
`references.” Id. at 30. Patent Owner’s basis for this argument is that
`
`Petitioner “conflates two different claim construction paradigms: the ‘broadest
`
`reasonable interpretation’ standard, which only applies to unexpired patents,
`
`and the standard traditionally used in district court patent suits and applicable
`
`at the Board for expired patents, which requires that claims be construed so as
`
`to sustain their validity.” Id. at 31 (citing Pet. 7). We disagree with this
`
`argument for the reasons set forth above in our discussion of claim
`
`construction. See supra Section I.F.1.
`
`Further, Patent Owner contends that Petitioner provides no construction
`
`for claim 1’s limitation reciting “as a function of the output of pixels imaging
`
`the same spectral band of light.” Prelim. Resp. 32. Patent Owner does not
`
`specify, however, how or why Petitioner’s failure to construe this limitation
`
`causes Petitioner’s obviousness analysis to be incorrect. Based on our
`
`construction of this limitation (see supra Section I.F.2.) and the record before
`
`us, Patent Owner’s contention is not convincing.
`
`In addition, Patent Owner argues that Bendell is non-analogous art. Id.
`
`at 36-39. Patent Owner contends that
`
`Bendell and the other secondary references are not
`analogous art because they are not from the same field of
`endeavor as the claimed invention (i.e., the field of vehicle
`vision system technologies) and they are not reasonably
`pertinent to the problems faced by the inventor Kenneth
`Schofield and his co-inventors (i.e., problems that are only
`encountered or that are of elevated concern in the vehicle
`field).
`
`Id. at 38.
`
`
`
`
`18
`
`
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`IPR2014-00261
`Patent 7,339,149 B1
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`
`A reference qualifies as prior art for an obviousness determination
`
`under 35 U.S.C. § 103(a) when it is analogous to the claimed invention. In re
`
`Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
`
`Two separate tests define the scope of analogous prior art:
`(1) whether the art is from the same field of endeavor,
`regardless of the problem addressed and, (2) if the
`reference is not within the field of the inventor’s endeavor,
`whether the reference still is reasonably pertinent to the
`particular problem
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