Paper 7
`Trials@uspto.gov
`Entered: February 10, 2016
`
`571–272–7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TRW AUTOMOTIVE U.S. LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-01685
`Patent 8,710,969 B2
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, MITCHELL G. WEATHERLY, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: February 10, 2016
`
`571–272–7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TRW AUTOMOTIVE U.S. LLC,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-01685
`Patent 8,710,969 B2
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, MITCHELL G. WEATHERLY, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`
`I. INTRODUCTION
`TRW Automotive U.S. LLC (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 1–11 and 13–23 of U.S.
`Patent No. 8,710,969 B2 (Ex. 1002, “the ’969 patent”). Magna Electronics
`Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”) to the Petition. An inter partes review may not be instituted “unless
`. . . there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a).
`For the reasons set forth below, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing the unpatentability of claims 1–11 and
`13–23 of the ’969 patent. Accordingly, we institute an inter partes review as
`to claims 1–11 and 13–23 of the ’969 patent on the grounds specified below.
`A.
`Related Proceedings
`The parties indicate that the ’969 patent is at issue in the following
`district court case: Magna Electronics Inc. v. TRW Automotive Holdings
`Corp., No. 1:14-cv-341 (W.D. Mich.). Pet. 3; Paper 5, 1.
`B.
`The ’969 Patent
`The ’969 patent relates to an accessory module that is mountable at an
`interior surface of a vehicle windshield. Ex. 1002, col. 1, ll. 18–21. The
`accessory module may house an accessory, such as an imaging device. Id. at
`col. 1, ll. 42–46. Specifically, the accessory module may include a portion
`that holds an imaging sensor and a portion that holds a lens. Id. at col. 1, ll.
`48–53, col. 2, ll. 16–21. These portions of the accessory module may be
`unitarily molded of a polymeric or plastic material so that the imaging
`
`2
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`sensor and lens may be readily attached at the desired location and/or
`orientation. Id. at col. 1, ll. 53–56, col. 2, ll. 43–46.
`C.
`Illustrative Claim
`Claims 1, 13, 17, and 21 are independent. Claim 1 is reproduced
`
`below.
`
`1. An accessory system for a vehicle, said accessory
`system comprising:
`a windshield, said windshield having an outer surface
`that is exterior of the vehicle when said windshield is mounted
`to a vehicle equipped with said accessory system and an inner
`surface that is interior of the vehicle when said windshield is
`mounted to the equipped vehicle;
`wherein said windshield is at a windshield angle relative
`to vertical when said windshield is mounted to the equipped
`vehicle;
`wherein said windshield has a mounting element attached
`at said inner surface;
`wherein said mounting element is adapted for mounting
`of an accessory module thereto and demounting of said
`accessory module therefrom;
`an accessory module adapted for mounting to and
`demounting from said mounting element;
`said accessory module accommodating a camera
`comprising a CMOS photosensor array and a lens;
`wherein said CMOS photosensor array is accommodated
`at said accessory module separate from said lens;
`wherein said CMOS photosensor array is disposed on a
`circuit board;
`wherein said accessory module is configured so that,
`when mounted to said mounting element attached at said
`windshield, said lens has a field of view through said
`windshield appropriate for a driver assistance system of the
`equipped vehicle; and
`
`3
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`
`wherein said driver assistance system comprises at least
`one of (i) a lane departure warning system of the equipped
`vehicle, (ii) an object detection system of the equipped vehicle,
`(iii) a traffic sign recognition system of the equipped vehicle,
`(iv) an adaptive cruise control system of the equipped vehicle,
`(v) a traffic lane control system of the equipped vehicle, (vi) a
`lane change assist system of the equipped vehicle and (vii) a
`blind spot detection system of the equipped vehicle.
`Id. at col. 16, l. 46–col. 17, l. 16.
`D.
`Evidence of Record
`Petitioner relies on the following references and declaration (see Pet.
`
`Exhibit No.
`Ex. 1003
`Ex. 1004
`Ex. 1007
`Ex. 1009
`
`2–3):
`Reference or Declaration
`PCT Pub. No. WO 03/065084 A1 (“Schofield PCT”)
`U.S. Patent No. 5,796,094 (“Schofield ’094”)
`Declaration of Homayoon Kazerooni, Ph.D.
`U.S. Patent No. 6,201,642 B1 (“Bos”)
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds1 (see Pet. 2–3):
`Claim(s)
`Basis
`1–7, 9–11, 13–16, 21,
`35 U.S.C. § 102(b)
`and 22
`1–7, 9–11, 13–16, 21,
`and 22
`8, 17–20, and 23
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`Reference(s)
`Schofield PCT
`
`Schofield PCT and
`Schofield ’094
`Schofield PCT, Schofield
`’094, and Bos
`
`
`1 Patent Owner argues that the asserted grounds are redundant, and, thus,
`should be denied. Prelim. Resp. 44–45. The decision cited by Patent Owner
`in support of that argument is not binding precedent and does not require
`that alternative grounds be denied, and we do not deny any grounds asserted
`in the Petition on that basis.
`
`4
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`
`II. ANALYSIS
`A.
`Identification of Real Parties in Interest
`The Petition identifies Petitioner as the real party in interest. Pet. 3.
`Patent Owner argues that ZF TRW Automotive Holdings Corp. (“TRW
`Holdings”) and ZF Friedrichshafen AG (“ZF”) are real parties in interest that
`are not identified in the Petition. Prelim. Resp. 45. According to Patent
`Owner, the Petition should be denied because, under 35 U.S.C. § 312(a)(2),
`a petition that does not identify all the real parties in interest cannot be
`considered. Id.
`Whether a party is a real party in interest is a “highly fact-dependent
`question” that is evaluated “on a case-by-case basis.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Some of
`the common considerations for determining whether a party is a real party in
`interest include whether the party funds, directs, or controls the petition or
`proceeding. Id. at 48,760. For the reasons discussed below, we are not
`persuaded, on this record, that TRW Holdings or ZF is a real party in interest
`in this case.
`
`1.
`TRW Holdings
`Patent Owner argues that TRW Holdings should have been identified
`as a real party in interest in the Petition because: 1) Petitioner is a wholly
`owned subsidiary of TRW Holdings (Prelim. Resp. 47); 2) an Annual Report
`filed by TRW Holdings contains financial information relating to its
`subsidiaries, including Petitioner (id. at 49); and 3) Petitioner and TRW
`Holdings share a website and sometimes are referenced jointly (id. at 49–
`50). We are not persuaded that TRW Holdings is a real party in interest in
`this case. Specifically, Patent Owner does not identify evidence indicating
`
`5
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`that TRW Holdings funds, directs, controls, or otherwise is involved in this
`Petition or proceeding. The evidence identified by Patent Owner indicates
`that TRW Holdings and Petitioner have a parent-subsidiary relationship,
`which by itself is insufficient to show that TRW Holdings is a real party in
`interest in this case.
`2.
`ZF
`Patent Owner argues that ZF should have been identified as a real
`party in interest in the Petition because: 1) ZF acquired TRW Holdings and
`its subsidiaries, including Petitioner, as wholly owned subsidiaries (id. at
`50–51); 2) ZF’s website lists locations of its subsidiaries, including locations
`of Petitioner (id. at 52); 3) TRW Holdings’ management includes two
`members of ZF’s management (id.); and 4) ZF’s financial statements contain
`financial information relating to its subsidiaries, including TRW Holdings
`(id. at 52–53). We are not persuaded that ZF is a real party in interest in this
`case. Specifically, Patent Owner does not identify evidence indicating that
`ZF funds, directs, controls, or otherwise is involved in this Petition or
`proceeding. The evidence identified by Patent Owner indicates that ZF and
`TRW Holdings have a parent-subsidiary relationship, which by itself is
`insufficient to show that ZF is a real party in interest in this case.
`B.
`Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
`F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed
`Techs., LLC v. Lee, No. 15-446, 84 U.S.L.W. 3218 (Jan. 15, 2016). On this
`record and for purposes of this decision, we determine that no claim terms
`
`6
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`require express construction, but we address below Patent Owner’s
`arguments regarding certain terms.
`1.
`wherein said CMOS photosensor array is accommodated
`at said accessory module separate from said lens
`Patent Owner argues that the phrase “wherein said CMOS
`photosensor array is accommodated at said accessory module separate from
`said lens” in claims 1, 14, and 21 should be construed to mean that the
`CMOS photosensor array and lens “are accommodated individually and
`separately, rather than as a unit.” Prelim. Resp. 9. We are not persuaded, on
`this record, that Patent Owner’s proposed construction is the broadest
`reasonable interpretation.
`Claims 1, 14, and 21 already recite that the CMOS photosensor array
`and lens are accommodated “separate[ly]” at the accessory module. Ex.
`1002, col. 16, ll. 66–67, col. 19, ll. 34–36, col. 21, ll. 26–27. Thus, Patent
`Owner’s proposed construction merely adds a requirement that the
`photosensor array and lens are not accommodated “as a unit.” Prelim.
`Resp. 9. Patent Owner argues that the ’969 patent indicates that the
`photosensor array and lens are provided by different manufacturers, not as a
`unit. Id. at 9–12. However, Patent Owner does not explain why the manner
`in which the photosensor array and lens are provided necessarily limits the
`manner in which they are accommodated in the accessory module. Id.
`Further, the ’969 patent indicates that, although the photosensor array and
`lens are accommodated separately, they nonetheless are accommodated in a
`single “unitarily formed” support. Ex. 1002, col. 2, ll. 30–46.
`2.
`electrical connector
`Patent Owner argues that the term “electrical connector” in claims 2,
`13, 17, and 21 should be construed to mean “a plug or socket connector
`
`7
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`configured for making electrical connection between a separate wiring
`harness and circuitry of the accessory module.” Prelim. Resp. 14. We are
`not persuaded, on this record, that Patent Owner’s proposed construction is
`the broadest reasonable interpretation. The ’969 patent states that “[c]arrier
`portion 12 also includes a connector 34, such as a multi-pin connector or
`plug or socket, for electrically connecting the accessory module 10 to an
`electrical wire or cable or lead (not shown) of the vehicle.” Ex. 1002, col. 6,
`ll. 1–5. Thus, Patent Owner’s proposed construction would improperly limit
`the claims to just some of the exemplary electrical connectors disclosed in
`the ’969 patent, namely plugs and sockets, and would exclude other
`examples, such as a multi-pin connector.
`C.
`Asserted Grounds of Unpatentability
`1.
`Anticipation of Claims 1–7, 9–11, 13–16, 21, and 22 by
`Schofield PCT
`Petitioner argues that claims 1–7, 9–11, 13–16, 21, and 22 are
`anticipated by Schofield PCT. Pet. 2. We have reviewed Petitioner’s
`assertions and supporting evidence, and, for the reasons discussed below,
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claims 1–7, 9–11, 13–16, 21, and 22 are anticipated by Schofield PCT. See
`Pet. 7–29.
`Independent claims 1 and 21 and dependent claim 14 recite “wherein
`said CMOS photosensor array is accommodated at said accessory module
`separate from said lens.” Ex. 1002, col. 16, ll. 66–67, col. 19, ll. 34–36, col.
`21, ll. 26–27. Petitioner argues that Schofield PCT discloses an accessory
`module for housing an image system, and that Schofield PCT specifically
`incorporates by reference the image system disclosed in Schofield ’094. Pet.
`11–12; Ex. 1003, 35:11–23. Petitioner also argues that Schofield ’094
`
`8
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`discloses an image sensor module that accommodates a CMOS photosensor
`array separate from a lens. Pet. 11–12; Ex. 1004, col. 3, ll. 1–3, col. 4, ll.
`16–21, Fig. 2.
`Patent Owner argues that Petitioner does not show sufficiently that
`Schofield PCT incorporates by reference the image system disclosed in
`Schofield ’094 because Petitioner misquotes certain portions of Schofield
`PCT. Prelim. Resp. 16. Patent Owner’s argument is not persuasive.
`Petitioner sufficiently identifies portions of Schofield PCT that incorporate
`by reference the image system disclosed in Schofield ’094. Pet. 11–12
`(citing Ex. 1003, 35:20–23 (“an image or vision system or sensor . . . such
`as the types disclosed in . . . 5,796,094, which are hereby incorporated
`herein by reference.”)).
`Patent Owner argues that Schofield ’094 does not disclose an image
`sensor module that accommodates a CMOS photosensor array separate from
`a lens. Prelim. Resp. 17–21. Specifically, Patent Owner argues that the
`“term module indicates that imaging sensor module 14 is provided as a unit”
`and, thus, the “parts of imaging sensor module 14 are not accommodated
`separate from one another.” Id. at 18. Patent Owner also argues that Figure
`2 of Schofield ’094 shows that, unless array 38 is accommodated together
`with lens 36, “there would be no support to hold array 38 in place.” Id. at
`19. Patent Owner’s argument is not persuasive. On this record, we are
`persuaded that Figure 2 of Schofield ’094 indicates that CMOS photosensor
`array 38 would be accommodated separately from lens 36. Pet. 11–12; Ex.
`1004, col. 4, ll. 16–21, Fig. 2.
`Independent claim 13 and dependent claim 2 recite “wherein said
`accessory module comprises an electrical connector.” Ex. 1002, col. 17, ll.
`
`9
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`18–19, col. 19, ll. 10–11. Petitioner argues that Schofield PCT discloses an
`accessory module provided with an electrical connector, such as a multi-pin
`connector. Pet. 15–16; Ex. 1003, 20:5–8. Patent Owner argues that
`Schofield PCT does not disclose an electrical connector because it does not
`disclose a plug or socket connector. Prelim. Resp. 22–23. Patent Owner’s
`argument is not persuasive. As discussed above, we construe the term
`“electrical connector” to encompass a multi-pin connector. See supra
`Section II.B.2. Patent Owner also argues that “[w]hat is shown and
`suggested in Figure 1 of Schofield PCT is a flying lead,” which “is not what
`is claimed in claim 13.” Prelim. Resp. 24. However, Patent Owner does not
`explain specifically why the electrical connector disclosed in Schofield PCT
`is a “flying lead” or how that distinguishes Schofield PCT from the
`challenged claims. Id.
`Dependent claim 2 recites “wherein said electrical connector
`comprises a plurality of conducting members.” Ex. 1002, col. 17, ll. 19–21.
`Petitioner argues that Schofield PCT discloses an accessory module
`provided with an electrical connector, such as a multi-pin connector. Pet.
`15–16; Ex. 1003, 20:5–8. Patent Owner argues that an “electrical connector
`does not and need not inherently or necessarily have a plurality of pins or
`terminals.” Prelim. Resp. 25. Patent Owner’s argument is not persuasive.
`Petitioner shows sufficiently that Schofield PCT expressly discloses a multi-
`pin connector. Pet. 15–16; Ex. 1003, 20:5–8.
`Independent claim 13 and dependent claim 3 recite “wherein said
`electrical connector connects said circuitry with at least one of (i) a
`communication bus of the equipped vehicle and (ii) a CAN communication
`bus of the equipped vehicle.” Ex. 1002, col. 17, ll. 29–32, col. 19, ll. 21–24.
`
`10
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`Schofield PCT discloses an electrical connector that allows the accessory
`module to communicate with other systems of the vehicle. Ex. 1003, 20:14–
`20. Petitioner argues that this communication between the accessory module
`and the other systems of the vehicle occurs over a communication bus, such
`as a CAN communication bus. Pet. 17; Ex. 1003, 25:7–13, 38:6–10. Patent
`Owner argues that Petitioner ignores the phrase “said electrical connector
`connects” in the challenged claims, but Patent Owner does not provide any
`further explanation or support for that argument. Prelim. Resp. 26. Patent
`Owner’s argument is not persuasive. Petitioner shows sufficiently that
`Schofield PCT discloses an electrical connector that connects the accessory
`module to other systems in the vehicle via a communication bus. Pet. 17;
`Ex. 1003, 20:14–20, 25:7–13, 38:6–10.
`Dependent claims 5 and 16 recite “wherein said accessory module
`comprises a carrier member that holds an accessory and wherein said
`accessory module comprises a casing that at least partially encases said
`accessory.” Ex. 1002, col. 17, ll. 40–43, col. 19, ll. 49–52. Petitioner argues
`that Schofield discloses an accessory module that includes a body with a
`cavity for receiving an accessory and a casing that substantially seals the
`accessory. Pet. 18–19; Ex. 1003, 14:14–16, 18:3–10. Patent Owner argues
`that Petitioner does not “point to any particular part of Schofield PCT’s
`accessory module as being the claimed carrier member.” Prelim. Resp. 27.
`Patent Owner’s argument is not persuasive. Petitioner identifies the body of
`the accessory module as being the claimed carrier member. Pet. 18–19; Ex.
`1003, 14:14–16, 18:3–10.
`Dependent claims 7 and 15 recite “wherein said accessory module
`comprises a first holding portion and a second holding portion and wherein
`
`11
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`said CMOS photosensor array is held at said first holding portion and
`wherein said lens is held at said second holding portion.” Ex. 1002, col. 17,
`ll. 50–54, col. 19, ll. 43–47. Petitioner argues that, in Schofield ’094, the
`portion of the housing that holds the CMOS photosensor array is the claimed
`first holding portion and the portion of the housing that holds the lens is the
`claimed second holding portion. Pet. 20–21; Ex. 1004, col. 4, ll. 16–21, Fig.
`2. Patent Owner argues that, “[b]ecause the imaging sensor module 14 of
`Schofield ’094 is a self-contained unit, there is only a single holding portion,
`and not two as claimed.” Prelim. Resp. 29. Patent Owner’s argument is not
`persuasive. On this record, we are persuaded that Figure 2 of Schofield ’094
`indicates that imaging sensor module 14 includes one holding portion for
`CMOS photosensor array 38 and a second holding portion for lens 36. Pet.
`20–21; Ex. 1004, col. 4, ll. 16–21, Fig. 2.
`2.
`Obviousness of Claims 1–7, 9–11, 13–16, 21, and 22
`over Schofield PCT and Schofield ’094
`Petitioner argues that claims 1–7, 9–11, 13–16, 21, and 22 would have
`been obvious over Schofield PCT and Schofield ’094. Pet. 2. Petitioner
`presents this ground “out of an abundance of caution should the Board find
`that the incorporation of Schofield ‘094 by reference in Schofield PCT is not
`sufficient for anticipation.” Pet. 29. Petitioner’s argument and evidence
`regarding the manner in which Schofield PCT and Schofield ’094 describe
`the limitations of the challenged claims are similar to the anticipation ground
`discussed above. Compare id. at 7–29 (anticipation ground) with id. at 29–
`50 (obviousness ground). Petitioner argues that it would have been obvious
`to combine the cited teachings of Schofield PCT and Schofield ’094 because
`Schofield PCT expressly suggests incorporating the image system described
`in Schofield ’094. Id. at 30. We have reviewed Petitioner’s assertions and
`
`12
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`supporting evidence, and, for the reasons discussed below, Petitioner
`demonstrates a reasonable likelihood of prevailing in showing that claims 1–
`7, 9–11, 13–16, 21, and 22 would have been obvious over Schofield PCT
`and Schofield ’094. See id. at 29–50.
`Patent Owner presents similar arguments to those discussed above
`with respect to the teachings of Schofield PCT and Schofield ’094. Prelim.
`Resp. 32–33, 35–40. For the reasons discussed above, Patent Owner’s
`arguments are not persuasive. See supra Section II.C.1. Patent Owner also
`argues that Petitioner does not show sufficiently that it would have been
`obvious to combine the imaging sensor in Schofield ’094 with the accessory
`module in Schofield PCT. Prelim. Resp. 33–35. Specifically, Patent Owner
`argues that Schofield PCT teaches that the accessory module may include a
`CMOS imaging array, not an entire imaging sensor. Id. at 34. Patent
`Owner’s argument is not persuasive. Schofield PCT expressly states that the
`accessory module may include the entire imaging sensor disclosed in
`Schofield ’094, not just the array. Ex. 1003, 35:11–23.
`3.
`Obviousness of Claims 8, 17–20, and 23 over Schofield
`PCT, Schofield ’094, and Bos
`Petitioner argues that claims 8, 17–20, and 23 would have been
`obvious over Schofield PCT, Schofield ’094, and Bos. Pet. 3. We have
`reviewed Petitioner’s assertions and supporting evidence, and, for the
`reasons discussed below, Petitioner demonstrates a reasonable likelihood of
`prevailing in showing that claims 8, 17–20, and 23 would have been obvious
`over Schofield PCT, Schofield ’094, and Bos. See Pet. 50–60.
`
`Independent claim 17 and dependent claims 8 and 23 recite that each
`of the CMOS photosensor array, lens, and accessory module are
`manufactured by a different manufacturer and that the CMOS photosensor
`
`13
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`array and lens are supplied to the manufacturer of the accessory module. Ex.
`1002, col. 17, l. 55–col. 18, l. 3, col. 20, ll. 22–37, col. 22, ll. 26–41.
`Petitioner argues that Schofield PCT teaches that the accessory module is
`manufactured by an accessory module manufacturer, Schofield ’094 teaches
`that the CMOS photosensor array is manufactured by VLSI Vision Ltd., and
`Bos teaches that the lens is manufactured by Applied Image Group/Optics.
`Pet. 51–52; Ex. 1003, 20:20–23; Ex. 1004, col. 8, ll. 40–42; Ex. 1009, col. 5,
`ll. 57–61. Petitioner argues that it would have been obvious for the
`accessory module manufacturer to obtain the CMOS photosensor array and
`the lens from the other manufacturers. Pet. 52–54; Ex. 1007 ¶ 109.
`
`Patent Owner argues that Schofield PCT only teaches that there is an
`accessory module manufacturer, not that the accessory module manufacturer
`is different than the manufacturers of the CMOS photosensor array and lens.
`Prelim. Resp. 41. Patent Owner’s argument is not persuasive. As discussed
`above, Schofield PCT indicates that a specific manufacturer makes the
`accessory module. Ex. 1003, 20:20–23. On this record, Petitioner shows
`sufficiently that it would have been obvious to one of ordinary skill in the art
`that the manufacturer of the accessory module can be different than the
`manufacturers of the CMOS photosensor array and lens. Pet. 51–53; Ex.
`1007 ¶ 108.
`
`Patent Owner also argues that Schofield ’094 and Bos teach that
`particular companies manufacture the CMOS photosensor array and the lens,
`but do not teach that those manufacturers supply the CMOS photosensor
`array and the lens to the accessory module manufacturer. Prelim. Resp. 41–
`42. Patent Owner’s argument is not persuasive. Schofield PCT teaches that
`a CMOS photosensor array and a lens are incorporated into the accessory
`
`14
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`module. Pet. 11–12; Ex. 1003, 35:11–23. On this record, Petitioner shows
`sufficiently that it would have been obvious to one of ordinary skill in the art
`that the CMOS photosensor array and the lens can be supplied to the
`accessory module manufacturer for incorporation into the accessory module.
`Pet. 52–54; Ex. 1007 ¶¶ 109–111.
`D. Declaration of Homayoon Kazerooni, Ph.D.
`Petitioner submitted the declaration of Dr. Homayoon Kazerooni with
`the Petition. See Ex. 1007. Patent Owner argues that Petitioner does not
`provide a sufficient explanation of the significance of Dr. Kazerooni’s
`declaration because the Petition “simply cites to voluminous portions” of the
`declaration. Prelim. Resp. 43. Patent Owner argues that, as a result, the
`Petition is deficient. Id. at 42. Patent Owner’s argument is not persuasive.
`For the reasons discussed above, Petitioner demonstrates a reasonable
`likelihood of prevailing on its challenge to the patentability of claims 1–11
`and 13–23, based on the evidence identified in the Petition. See supra
`Sections II.C.1–II.C.3. Thus, even assuming arguendo that the Petition does
`not explain sufficiently the significance of every portion of Dr. Kazerooni’s
`declaration, we are not persuaded, on this record, that the Petition is
`deficient.
`
`III. CONCLUSION
`Petitioner demonstrates a reasonable likelihood of prevailing on its
`challenge to the patentability of claims 1–11 and 13–23 of the ’969 patent.
`At this stage in the proceeding, we have not made a final determination with
`respect to the patentability of any of the challenged claims.
`
`15
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1–11 and 13–23 of the ’969 patent on
`the following grounds:
`A. Claims 1–7, 9–11, 13–16, 21, and 22 as unpatentable under 35
`U.S.C. § 102(b) as anticipated by Schofield PCT;
`B.
`Claims 1–7, 9–11, 13–16, 21, and 22 as unpatentable under 35
`U.S.C. § 103(a) as obvious over Schofield PCT and Schofield ’094; and
`C.
`Claims 8, 17–20, and 23 as unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Schofield PCT, Schofield ’094, and Bos;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter
`partes review of the ʼ969 patent is hereby instituted commencing on the
`entry date of this Order, and, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`
`FURTHER ORDERED that the trial is limited to the grounds
`identified, and no other grounds are authorized.
`
`
`
`16
`
`
`
`IPR2015-01685
`Patent 8,710,969 B2
`
`PETITIONER:
`
`Jon R. Trembath
`Allan Sternstein
`Nikhil U. Patel
`Timothy K. Sendek
`Douglas W. Link
`LATHROP & GAGE LLP
`
`PATENT OWNER:
`
`David K.S. Cornwell
`Mark W. Rygiel
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
`Timothy A. Flory
`Terence J. Linn
`GARDNER, LINN, BURKHART & FLORY, LLP
`
`17
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
