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
`__________________
`
`PATENT OWNER MAGNA ELECTRONICS INC.’S PRELIMINARY
`RESPONSE TO PETITION PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`Case IPR2015-01685
`Patent 8,710,969
`
`I. 
`II. 
`
`B. 
`
`TABLE OF CONTENTS
`The Board should not institute inter partes review of the ’969 patent. .......... 1 
`The ’969 patent innovatively provides an accessory module that simplifies
`the assembly process while allowing for flexibility in using the appropriate
`lens and imaging sensor for particular applications. ....................................... 4 
`III.  TRW fails to fully and properly consider the scope of the claims before
`applying the asserted references. ..................................................................... 7 
`A.  Wherein said CMOS photosensor array is accommodated at said
`accessory module separate from said lens. ........................................... 9 
`B.  Wherein said accessory module comprises a first holding portion and
`a second holding portion and wherein said CMOS photosensor array
`is held at said first holding portion and wherein said lens is held at
`said second holding portion. ................................................................ 12 
`C.  Wherein said accessory module comprises an electrical connector. .. 13 
`IV.  Schofield PCT fails to anticipate the challenged claims of Ground 1. ......... 15 
`A. 
`TRW has not established that Schofield PCT adequately incorporates
`Schofield ’094 by reference to convert Schofield PCT into an
`anticipatory reference. ......................................................................... 15 
`Even if Schofield PCT does adequately incorporate Schofield ’094,
`the disclosures combined do not disclose all the claim elements. ...... 16 
`1. 
`TRW has not established that the references disclose “wherein
`said CMOS photosensor array is accommodated at said
`accessory module separate from said lens,” as claimed in claims
`1, 14, and 21. ............................................................................. 17 
`TRW has not established that the references disclose “wherein
`said accessory module comprises an electrical connector,” as
`claimed in claims 2 and 13. ....................................................... 21 
`TRW has not established that the references disclose “wherein
`said electrical connector comprises a plurality of conducting
`members,” as claimed in claim 2. ............................................. 25 
`TRW has not established that the references disclose “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,” as
`claimed in claims 3 and 13. ....................................................... 26 
`
`2. 
`
`3. 
`
`4. 
`
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`i
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`

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`5. 
`
`6. 
`
`V. 
`
`B. 
`
`C. 
`
`D. 
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`Case IPR2015-01685
`Patent 8,710,969
`TRW has not established that the references disclose “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,” as claimed
`in claims 5 and 16. .................................................................... 27 
`TRW has not established that the references disclose “wherein
`said accessory module comprises a first holding portion and a
`second holding portion and wherein said CMOS photosensor
`array is held at said first holding portion and wherein said lens
`is held at said second holding portion,” as claimed in claims 7
`and 15. ....................................................................................... 28 
`The combination of Schofield PCT and Schofield ’094 fails to render
`obvious the challenged claims of Ground 2. ................................................. 31 
`A. 
`TRW has not established that the references render obvious “wherein
`said CMOS photosensor array is accommodated at said accessory
`module separate from said lens,” as claimed in claims 1, 14, and 21. 32 
`TRW has not established that the references render obvious “wherein
`said accessory module comprises an electrical connector,” as claimed
`in claims 2 and 13. ............................................................................... 35 
`TRW has not established that the references render obvious “wherein
`said electrical connector comprises a plurality of conducting
`members,” as claimed in claim 2. ....................................................... 36 
`TRW has not established that the references render obvious “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,” as claimed in claims 3
`and 13. ................................................................................................. 36 
`TRW has not established that the references render obvious “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,” as claimed in claims 5 and
`16. ........................................................................................................ 37 
`TRW has not established that the references render obvious “wherein
`said accessory module comprises a first holding portion and a second
`holding portion and wherein said CMOS photosensor array is held at
`said first holding portion and wherein said lens is held at said second
`holding portion,” as claimed in claims 7 and 15. ................................ 38 
`
`E. 
`
`F. 
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`Case IPR2015-01685
`Patent 8,710,969
`VI.  The combination of Schofield PCT, Schofield ’094, and Bos fails to render
`obvious the challenged claims of Ground 3. ................................................. 40 
`VII.  The Kazerooni Declaration should be disregarded because TRW improperly
`incorporates it by reference. .......................................................................... 42 
`VIII.  Ground 2 is vertically redundant to Ground 1. .............................................. 44 
`IX.  TRW’s failure to accurately identify all real parties in interest renders the
`Petition fatally defective requiring non-institution. ...................................... 45 
`A. 
`TRW Holdings is an unnamed RPI. .................................................... 47 
`B. 
`ZF is an unnamed RPI. ........................................................................ 50 
`Conclusion ..................................................................................................... 55 
`
`
`
`X. 
`
`
`
`iii
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`Case IPR2015-01685
`Patent 8,710,969
`
`EXHIBIT LIST
`
`Description 
`Public Redacted Version of Answer to Second Amended Complaint
`and Jury Demand, Magna Electronics Inc. v. TRW Automotive
`Holdings Corp., et al., Case No. 1:14-cv-00341 (W.D. Mich.), filed
`September 8, 2014. (“Answer”) 
`Amended Corporate Disclosure Statement Under Fed. R. Civ. P.
`7.1, Bridgestone Americas Tire Operations, LLC v. TRW
`Automotive Holdings, Corp., et al., Case No. 1:13-cv-1550 (D.
`Del.), filed August 7, 2015. (“Amended Corp. Disclosure”)  
`Form 10-K (Annual Report) for TRW Automotive Holdings Corp.,
`filed February 13, 2015 for the Period Ending December 31, 2014,
`with Amended Annual Report Form 10-K/A, filed April 28, 2015.
`(“Form 10-K”) 
`TRW Press Release, “U.S. Federal Trade Commission Clears ZF’s
`Acquisition of TRW,” dated May 5, 2015. (“May 5 TRW Press
`Release”) 
`ZF Press Release, “ZF completes Acquisition of TRW
`Automotive,” dated May 15, 2015. (“May 15 ZF Press Release”) 
`TRW’s Website, accessed at http://www.trw.com (“TRW
`Website”)
`“From a Position of Strength: ZF and TRW Unleash the Power
`of2,” accessed at
`http://www.zf.com/corporate/en_de/magazine/magazin_artikel_vie
`wpage_22089384.html?_ga=1 (“ZF Website”)
`ZF Locations in the USA, accessed at
`http://www.zf.com/corporate/en_de/company/locations_worldwide/
`north_america/united-
`states_locations/united_states_zfworldwide.jsp (“ZF Locations”) 
`ZF Board of Management, accessed at
`http://www.zf.com/corporate/en_de/company/organization/board_o
`f_management/board-of-management.html (“ZF Management”) 
`ZF TRW Board of Directors, accessed at
`http://www.trw.com/AboutTRW/leadership/ZF_TRW_Board_of_D
`irectors (“ZF TRW Directors”) 
`
`Exhibit No. 
`2001 
`
`2002 
`
`2003 
`
`2004 
`
`2005 
`
`2006
`
`2007
`
`2008 
`
`2009 
`
`2010 
`
`
`
`iv
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`

`
`Case IPR2015-01685
`Patent 8,710,969
`
`Exhibit No. 
`2011 
`
`2012 
`
`2013 
`
`2014
`
`2015
`
`2016
`
`Description 
`ZF Press Release, “New Members to ZF’s Board of Management,”
`dated December 18, 2014 (“Dec. 18 ZF Press Release”) 
`ZF Investor Relations, accessed at
`http://www.zf.com/corporate/en_de/company/organization/investor
`_relations/investor_relations_index.html?_ga=1.233489116.316708
`794.1436894979 (“Investor Relations”) 
`Condensed Interim Consolidated Financial Statements as of June
`30, 2015 for ZF Friedrichshafen AG for Period dating January 1 to
`June 30, 2015. (“Consol. Financial Statements”) 
`“Highway Driving Assist Totally relaxed at 75 mph,” accessed at
`http://www.zf.com/corporate/en_de/magazine/magazin_artikel_vie
`wpage_22123496.html (“ZF Article”)
`“ZF TRW Active & Passive Safety Technology Division
`Management,” accessed at
`http://www.trw.com/AboutTRW/leadership/ZF_TRW_Managemen
`t_Board (“ZF Division Management”)
`“BNC connector,” Wikipedia, the Free Encyclopedia, accessed at
`https://en.wikipedia.org/wiki/BNC_connector (“BNC connector”)
`
`
`
`
`v
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`

`
`I.
`
`Case IPR2015-01685
`Patent 8,710,969
`The Board should not institute inter partes review of the ’969 patent.
`Petitioner TRW Automotive U.S. LLC (“TRW”) seeks inter partes review
`
`of U.S. Patent No. 8,710,969 (“the ’969 patent”) and alleges unpatentability of
`
`various claims of the ’969 patent on three different obviousness grounds. First,
`
`TRW asserts that claims 1-7, 9-11, 13-16, 21, and 22 are anticipated by WIPO
`
`Publication No. WO 03/065084 to Schofield (“Schofield PCT”). Second, TRW
`
`challenges claims 1-7, 9-11, 13-16, 21, and 22 as obvious over Schofield PCT and
`
`U.S. Patent No. 5,796,094 to Schofield (“Schofield ’094”). Finally, TRW
`
`challenges claims 8, 17-20, and 23 as obvious over Schofield PCT, Schofield ’094,
`
`and U.S. Patent No. 6,201,642 to Bos (“Bos”). Each of these proposed grounds is
`
`flawed. Accordingly, the Board should not institute inter partes review of any of
`
`the challenged claims of the ’969 patent.
`
`In Grounds 1 and 2, Schofield PCT and Schofield ’094 fail to disclose each
`
`and every feature of the challenged claims. The entire Petition is based on TRW’s
`
`premise that the ’969 patent is nothing more than a reiteration of the disclosure
`
`from Schofield PCT and Schofield ’094. Thus, TRW alleges that these references
`
`render the claims unpatentable without properly considering the meaning of each
`
`of the claim terms.
`
`With respect to claims 1, 14, and 21, TRW overlooks the meaning of
`
`“wherein said CMOS photosensor array is accommodated at said accessory
`
`
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`1
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`Case IPR2015-01685
`Patent 8,710,969
`module separate from said lens,” which means the components are accommodated
`
`individually and separately, rather than as a unit. In contrast, the imaging sensor
`
`module of Schofield ’094 is a self-contained unit that includes both the lens and
`
`the array. TRW’s only argument for how Schofield ’094 discloses this claim
`
`feature seems to be either that there is some spatial separation between the lens and
`
`the array or that the lens and the array are not the same component. But this is not
`
`what is claimed. Accordingly, Schofield ’094 does not disclose this feature and, as
`
`recognized by TRW, neither does Schofield PCT. Grounds 1 and 2 fail with
`
`respect to claims 1-7, 9-11, 14, 21, and 22 for at least this reason.
`
`Similarly, with respect to claims 2, 3, and 13, TRW conflates the claimed
`
`“electrical connector” with the broader idea of electrical connections. Thus, while
`
`TRW points to various disclosures of electrical connections in Schofield PCT,
`
`TRW does not establish that Schofield PCT discloses the claimed electrical
`
`connector, which is a plug or socket connector configured for making electrical
`
`connection between a separate wiring harness and circuitry of the accessory
`
`module. In addition, TRW fails to establish that Schofield PCT discloses other
`
`features of the electrical connector claimed in claims 2, 3, and 13. Thus, Grounds 1
`
`and 2 fail with respect to claims 2, 3, and 13-16 for at least this reason.
`
`Additional deficiencies prevent TRW from meeting its burden with respect
`
`to certain claims challenged under Grounds 1 and 2. For example, TRW fails to
`
`
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`2
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`Case IPR2015-01685
`Patent 8,710,969
`point to particular aspects of the references that disclose the carrier member
`
`claimed in claims 5 and 16 and the first and second holding portions claimed in
`
`claims 7 and 15. At least for the reasons identified above and explained below, the
`
`Board should deny institution for all challenged claims under Grounds 1 and 2.
`
`In Ground 3, TRW relies on a discrete disclosure of a company that
`
`manufactures arrays in Schofield ’094 and a discrete disclosure of a company that
`
`manufactures lenses in Bos as disclosing the claim features of claims 8, 17, and 23
`
`relating to first, second, and third manufacturers. But these separate disclosures do
`
`not suggest what is claimed. Accordingly, Ground 3 fails with respect to claims 8,
`
`17-20, and 23 for at least this reason. The Board should deny institution for all
`
`challenged claims under Ground 3.
`
`The Board should also deny institution because TRW fails to accurately
`
`identify all real parties in interest. Based on evidence currently available to Magna,
`
`it appears that two additional entities are also real parties in interest in this
`
`proceeding. Thus, the requirements of 35 U.S.C. § 312(a)(2) have not been met.
`
`Because TRW is now barred by statute from supplementing its Petition under 35
`
`U.S.C. § 315(b), it is too late for TRW to cure this defect.
`
`
`
`3
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`

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`Case IPR2015-01685
`Patent 8,710,969
`II. The ’969 patent innovatively provides an accessory module that
`simplifies the assembly process while allowing for flexibility in using the
`appropriate lens and imaging sensor for particular applications.
`
`The inventors of the ’969 patent recognized that accessory modules with a
`
`camera that existed prior to the invention included “multiple components that are
`
`often difficult to arrange so that the desired field of view is provided by the
`
`camera.” (’969 patent, Ex. 1002, 1:31-34.) In addition, because the camera and the
`
`lens were provided as a unit, it was “difficult for an electronics supplier, who often
`
`prefers to provide the camera or imaging sensor on a printed circuit board.” (Id. at
`
`1:35-38.) The inventors therefore invented an accessory system for a vehicle with
`
`advantages that include “eas[ing] the assembly of the accessory module and
`
`deproliferat[ing] parts in the assembly plant” and providing “[d]ifferent accessory
`
`supports having different lens mounting angles may be provided to accommodate
`
`different windshield angles, depending on the particular application of the
`
`accessory module.” (Id. at 2:43-49.)
`
`“The accessory support may support an imaging sensor or device and a lens”
`
`and “readily receives the accessory and circuitry to ease assembly of the accessory
`
`module.” (Id. at 2:31-35.) This molded accessory support, also referred to as a
`
`carrier portion, accommodates the imaging sensor or device separate from the lens.
`
`(See id. at 4:28-5:3.) Accordingly, “the carrier portion of the accessory module
`
`may be provided at a vehicle assembly plant and different imaging arrays or
`
`
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`4
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`Case IPR2015-01685
`Patent 8,710,969
`sensors and/or other accessories or circuit board assemblies may be attached or
`
`mounted to the carrier portions depending on the particular application” and the
`
`“appropriate lens may be readily attached to the lens mounting portion, whereby
`
`the imaging sensor or chip is readily positioned at the appropriate location and
`
`orientation relative to the lens, without requiring adjustment of the chip location.”
`
`(Id. at 7:42-53.) Thus, the accessory module simplifies the assembly process while
`
`allowing for flexibility in using the appropriate lens and imaging sensor for
`
`particular applications. In the prior art, “the camera and lens [we]re often provided
`
`together as a unit, which may be difficult for an electronics supplier, who often
`
`prefers to provide the camera or imaging sensor on a printed circuit board.” (Id. at
`
`1:35-38.) The ’969 patent thus went against the grain of the prior teachings.
`
`Ignoring the clear disclosure of the invention of the ’969 patent, TRW
`
`argues instead that the ’969 patent is nothing more than a reiteration of previous
`
`disclosures made by at least one overlapping inventor. (See, e.g., Petition, pp. 5-6.)
`
`Besides the point that the ’969 patent discloses and claims features not disclosed in
`
`Schofield PCT and Schofield ’094, as explained below, TRW reaches incorrect
`
`conclusions regarding U.S. Patent No. 6,824,281 (“the ’281 patent”) and Schofield
`
`PCT, as well as Schofield ’094.
`
`For example, TRW points out that Magna “disclosed the non 102(b) prior art
`
`‘281 Patent to the USPTO during prosecution of the ‘969 Patent, [but] it did not
`
`
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`Case IPR2015-01685
`Patent 8,710,969
`disclose its 102(b) prior art counterpart [Schofield PCT], which has the same
`
`specification as the ‘281 Patent.” (Id. at 1-2 (emphasis in original).) TRW
`
`improperly concludes that “[n]otably, had the Schofield PCT been properly
`
`disclosed to the USPTO during prosecution of the ‘969 Patent it would likely not
`
`have been granted.” (Id. at 5.) TRW fails to acknowledge that if Schofield PCT
`
`would have prevented the ’969 patent from granting, then so would have the ’281
`
`patent, absent a declaration swearing behind its publication date. But there was no
`
`rejection over the ’281 patent during prosecution (id. at 6), indicating that
`
`disclosing Schofield PCT would not have prevented the ’969 patent from granting.
`
`As another example, TRW states that “[t]he ‘969 Patent consistently
`
`incorporates U.S. Patent No. 6,824,281 by reference.” (Id. at 1 (emphasis added).)
`
`Then TRW improperly concludes that:
`
` the ’281 patent “was incorporated by reference into the ‘969 Patent as
`
`teaching certain claim limitations” (id. at 5);
`
` the ’969 patent “admits Schofield ’281, which has the same
`
`specification as Schofield PCT, discloses the claimed accessory
`
`module and mounting element” (id. at 6); and
`
` the ’969 patent “relies on Schofield PCT’s disclosure (1002-024 at
`
`16:4-13) to satisfy § 112.” (Id. at 14.)
`
`
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`6
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`Patent 8,710,969
`The ’969 patent actually only incorporates the ’281 patent twice: once to
`
`indicate what other types of mounting elements could be used (’969 patent, 3:62-
`
`67), and once to explain what other types of accessory modules the described
`
`module could be “at or near or associated with” (id. at 16:4-13). Neither of these
`
`references to the ’281 patent are necessary to satisfy § 112. Nor do they make any
`
`admission regarding claim limitations that are taught by Schofield ’281.
`
`TRW reaches a similar improper conclusion regarding Schofield ’094,
`
`alleging that the ’969 patent “also admits that the claimed CMOS imaging sensor
`
`and lens is disclosed by Schofield ‘094.” (Petition, p. 6.) As explained below, this
`
`reference to Schofield ’094 actually shows that the claimed imaging sensor and
`
`lens are different than those disclosed in Schofield ’094.
`
`Thus, although the ’969 patent refers to the ’281 patent and Schofield ’094
`
`(among other references) and incorporates them by reference, these references
`
`serve to provide context and applications for its invention. In short, these
`
`incorporations by reference do not undermine the inventors’ innovative accessory
`
`module that simplifies the assembly process while allowing for flexibility in using
`
`the appropriate lens and imaging sensor for particular applications.
`
`III. TRW fails to fully and properly consider the scope of the claims before
`applying the asserted references.
`
`TRW states that “TRW does not believe any additional claim construction is
`
`necessary.” (Petition, p. 5.) As a result, TRW fails to fully and properly consider
`
`
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`Patent 8,710,969
`the scope of the claims before applying the asserted references. Because this is a
`
`crucial element of determining obviousness, TRW’s analysis is flawed and TRW’s
`
`failure to properly construe the claim terms prevents TRW from establishing a
`
`reasonable likelihood of prevailing.
`
`Two of the three key factual inquiries set forth in Graham for establishing
`
`obviousness under 35 U.S.C. § 103(a) are determining the scope and content of the
`
`prior art and ascertaining the differences between the prior art and the claims at
`
`issue. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). These inquiries
`
`necessarily involve an analysis of what the references and claims teach, and what
`
`is missing. This analysis is a two-step process: “‘the first step requires construing
`
`the claim,’ and ‘[t]he second step in the analysis requires a comparison of the
`
`properly construed claim to the prior art.’” Enzo Biochem, Inc. v. Applera Corp.,
`
`599 F.3d 1325, 1332 (Fed. Cir. 2010) (emphasis added) (quoting Power MOSFET
`
`Techs., LLC v. Siemens AG, 378 F.3d 1396, 1406 (Fed. Cir. 2004)).
`
`In sum, without a discernible claim construction, a proper patentability
`
`analysis cannot be performed. Id.; see also Honeywell Int’l Inc. v. Int’l Trade
`
`Comm’n, 341 F.3d 1332, 1342 (Fed. Cir. 2003); ZTE Corp. v. ContentGuard
`
`Holdings, Inc., IPR2013-00139, Paper 15, p. 27 (P.T.A.B. Jul. 9, 2013). Here,
`
`TRW fails to provide the proper claim constructions for several key claim
`
`limitations before applying the asserted references to the claims.
`
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`Case IPR2015-01685
`Patent 8,710,969
`A. Wherein said CMOS photosensor array is accommodated at said
`accessory module separate from said lens.
`
`TRW does not propose a claim construction for “wherein said CMOS
`
`photosensor array is accommodated at said accessory module separate from said
`
`lens.” (See Petition, pp. 5, 11-12.) As claimed in claims 1, 14, and 21 of the ’969
`
`patent, “wherein said CMOS photosensor array is accommodated at said accessory
`
`module separate from said lens” should be construed to mean the components are
`
`accommodated individually and separately, rather than as a unit. In other words,
`
`this feature means that the CMOS photosensor array is accommodated at the
`
`accessory module individually and separately and distinctly from how/where the
`
`lens is accommodated at the accessory module.
`
`The background section of the ’969 patent explains that “the camera and
`
`lens are often provided together as a unit, which may be difficult for an electronics
`
`supplier, who often prefers to provide the camera or imaging sensor on a printed
`
`circuit board.” (’969 patent, 1:35-38.) Thus, one of the objectives of the invention
`
`was to allow for the array and the lens to be accommodated separate from one
`
`another, rather than as a unit. As a result, the structural features described in the
`
`’969 patent highlight that the array and the lens are accommodated individually
`
`and separately.
`
`For example, the ’969 patent discloses “a lens receiving or lens mounting
`
`portion 26 for receiving lens 20.” (Id. at 4:31-33.) The lens itself can be threaded
`
`
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`9
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`Case IPR2015-01685
`Patent 8,710,969
`or snapped into place. (Id. at 4:33-38.) In addition to the lens receiving portion, the
`
`’969 patent discloses “a sensor receiving portion or recess 30, such as at the
`
`rearward end of the lens receiving portion 26.” (Id. at 4:53-54.) The recess receives
`
`the imaging sensor and provides a mounting surface for the circuit board on which
`
`the imaging sensor is provided. (Id. at 4:54-5:3.) Thus, the lens is received not just
`
`at the front end, but through the front end, and the imaging sensor is received not
`
`just at the back end, but through the back end. (See id. at FIGS. 1, 10.) A unit, even
`
`if it includes both a lens and an imaging sensor could not be snapped into place in
`
`the front end and be received through the back end because a unit and its
`
`components are accommodated together, not separately.
`
`The ’969 patent further discloses that “the circuit board manufacturer and/or
`
`supplier need not provide the lens as well.” (Id. at 7:37-38.) Instead, the lens “may
`
`be provided by a lens manufacturer or supplier.” (Id. at 7:39.) Because the lens and
`
`the array are provided separately, they are not provided as a unit and can be
`
`accommodated separate from one another. Thus, different CMOS photosensor
`
`arrays are accommodated at accessory modules depending on the particular
`
`application or desired content of the particular accessory modules, and an
`
`appropriate lens may be readily accommodated at the lens mounting portion of an
`
`accessory module separate from
`
`the CMOS photosensor array
`
`that
`
`is
`
`
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`10
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`Case IPR2015-01685
`Patent 8,710,969
`accommodated at that accessory module and readily positioned at the appropriate
`
`location and orientation relative to the lens. (Id. at 7:42-53.)
`
`Plainly, the imaging sensor 18 and the lens 20 in the ’969 patent are not
`
`accommodated as a self-contained unit, but instead, are accommodated separately.
`
`This configuration provides benefits specifically derived from the imaging sensor
`
`18 being accommodated separate from the lens 20:
`
`[Because the imaging sensor 18 disposed on a circuit board]
`readily attache[s] to the carrier or holding portion of the
`accessory module, the circuit board manufacturer and/or
`supplier need not provide the lens as well. The lens then may be
`provided by a lens manufacturer or supplier, whereby the lens
`and circuit board/imaging sensor may be received by the
`accessory module manufacturer or by the vehicle assembler and
`assembled together. For example, the carrier portion of the
`accessory module may be provided at a vehicle assembly plant
`and different imaging arrays or sensors and/or other accessories
`or circuit board assemblies may be attached or mounted to the
`carrier portions depending on the particular application or
`desired content of the accessory module (such as what types of
`accessories are provided within or associated with the accessory
`module). The appropriate lens may be readily attached to the
`lens mounting portion, whereby the imaging sensor or chip is
`readily positioned at the appropriate location and orientation
`relative to the lens, without requiring adjustment of the chip
`location . . . . The accessory module thus may be provided as a
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`Case IPR2015-01685
`Patent 8,710,969
`family of modules, with different carrier portions with different
`angles between the lens mounting portion and the base portion
`being provided for different vehicles and/or windshield angles,
`while the same circuit boards and imaging sensors may be
`provided across different vehicle lines, depending on the
`desired content and particular application of the accessory
`module.
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`(Id. at 7:35-8:3.) Such benefits are not present if the imaging sensor is not
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`accommodated separate from the lens, as disclosed and claimed in the ’969 patent.
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`Thus, the teachings of the ’969 patent highlight that one component can be
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`accommodated without the other component also being accommodated instead of
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`the components being accommodated together as a single unit. As a result, each
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`component is “accommodated at said accessory module separate from” the other
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`component. The Board should therefore construe this claim term to mean the
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`components are accommodated individually and separately, rather than as a unit.
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`B. Wherein said accessory module comprises a first holding portion
`and a second holding portion and wherein said CMOS photosensor
`array is held at said first holding portion and wherein said lens is
`held at said second holding portion.
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`As claimed in claims 7, 15, 20, and 23 of the ’969 patent, “wherein said
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`accessory module comprises a first holding portion and a second holding portion
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`and wherein said CMOS photosensor array is held at said first holding portion and
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`wherein said lens is held at said second holding portion” further clarifies the
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`Case IPR2015-01685
`Patent 8,710,969
`“accommodated at said accessory module separate” feature discussed above. As
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`with that feature, TRW again provides no construction of this claim feature
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`(Petition, pp. 5, 20-21), instead simply arguing that the feature is met because
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`“Schofield ‘094 shows that the lens 36 is separate from the circuit board/CMOS
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`photosensor array 38” and that “[b]ecause the lens and CMOS array are separate
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`from one another, Schofield [’]094’s module teaches a first and second holding
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`portion.” (Id. at 20.)
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`But a proper claim construction of this feature requires that the module has a
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`first holding portion where the CMOS photosensor array is held separately and
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`distinctly from a second holding portion where the lens is held, whereby the lens
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`and CMOS photosensor array are held at the respective holding portions
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`individually and separately, rather than being held at any one location as a unit.
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`C. Wherein said accessory module comprises an electrical connector.
`TRW does not propose a claim construction for “wherein said accessory
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`module comprises an electrical connector.” (See Petition, pp. 5, 14-15.) As
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`disclosed in the ’969 patent, and claimed in claims 2, 13, 17, and 21, the “electrical
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`connector” comprises a plug or socket connector at the accessory module. (’969
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`patent, 6:1-30, FIGS. 1-10.) Figures 1, 4, 6, and 7 (reproduced below) illustrate
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`electrical connector 34. Additionally, the specification states that “[t]he socket
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`portion of connector 34 is integrally or unitarily molded with carrier portion 12 and
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`may exttend outwaard from thhe accessoory modulee 10 when
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`Case IPPR2015-011685
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`Paatent 8,7100,969
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`the accesssory moduule is
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`assemblled and positioned att the windsshield.” (Idd. at 6:6-100.)
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`TThus, as cllaimed in
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`the ’969 ppatent, thee “whereinn said acceessory moodule
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`comprisses an elecctrical connnector” feeature shouuld be connstrued to
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`mean thatt the
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`accessory modulee includess a plug oor socket
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`connector
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`configureed for maaking
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`ss and ciircuitry off the
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`ing harneelectricaal connecttion betweeen a sepparate wiri
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`accessory module.
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`Case IPR2015-01685
`Patent 8,710,969
`IV. Schofield PCT fails to anticipate the challenged claims of Ground 1.
`TRW alleges that Schofield PCT is an anticipatory reference only because it
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`incorporates Schofield ’094 by reference. (Petition, pp. 7-8.) Thus, TRW
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`acknowledges that without this incorporation by reference, there are claim
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`elements missing from the disclosure of Schofield PCT. For example, TRW states
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`that “Schofield PCT discloses a vehicle accessory module meeting the majority of
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`the limitations of the claimed vehicle accessory system.” (Id. at 5 (emphasis
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`added); see also id. at 6 (“Schofield PCT discloses a vehicle accessory system with
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`the majority of the elements claimed in the ’969 Patent.”).)
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`Schofield PCT therefore does not anticipate the challenged claims without
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`the disclosure of Schofield ’094. Moreover, TRW has not established that
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`Schofield PCT adequately incorporates Schofield ’094 by reference to convert
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`Schofield PCT into an anticipatory reference. Even if Schofield PCT does
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`adequately incorporate Schofield ’094, the disclosures combined do not disclose all
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`the claim elements.
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`A. TRW has not established that Schofield PCT adequately
`incorporates Schofield ’094 by reference to convert Schofield PCT
`into an anticipatory reference.
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`As petitioner, TRW bears the burden of showing that there is a reasonable
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`likelihood of prevailing with respect to at least one challenged clai