Takeaway: When challenging claims based on obviousness, the petitioner must provide sufficient evidence to show that one of ordinary skill in the art would have had a reason to combine the prior art references.

In its Decision denying institution, the Board determined that Petitioner did not show a reasonable likelihood that it would prevail in establishing the unpatentability of any challenged claims of the ’552 Patent. The ’552 Patent relates generally to an image sensing system for a vehicle, specifically to a system for controlling the headlights of the vehicle by controlling the vehicle’s headlamps in response to sensing the headlights of oncoming vehicles and taillights of leading vehicles.

The Board first examined the obviousness grounds based on Yanagawa in combination with various other references. Looking first at independent claim 1, Patent Owner argued that Petitioner did not provide any analysis as to how or why the Vellacott frame capture/exposure period feature would have been obvious to combine with Yanagawa.  The Board agreed with Patent Owner, and stated that Petitioner did not provide a persuasive fact-based analysis to support the proposed combination of Yanagawa and Vellacott, and Petitioner did not provide a persuasive rationale for combining these references.  Specifically, the Board found that Petitioner’s expert declaration did not proffer any explanation or persuasive evidence demonstrating that it would have been obvious to combine Yanagawa and Vellacott.  Further, Patent Owner argued, and the Board agreed, that Petitioner did not address one of the claim limitations of claim 1 in its arguments, claim chart, or expert declaration.  Because challenged claims 4-6, 9-11, 15-18, 20-39, 41, 42, 44, 45, 53, 55, and 58-60 all depend from independent claim 1, the Board also found Petitioner had not shown a likelihood of success on those claims.

The Board then assessed Petitioner’s challenge to independent claim 61, and its dependent claims 62-64, 66-71, and 73-78. Claim 61 also includes the frame capture/exposure period feature of claim 1; therefore, Petitioner’s challenge was similarly deficient regarding the combination of Yanagawa and Vellacott.  Further, claim 61 recites an additional limitation that Petitioner acknowledged is not disclosed by Yanagawa, but asserted that the feature was disclosed in Bendell and Kawahara.  Patent Owner argued, and the Board agreed, that Petitioner’s argument that both Bendell and Kawahara disclose the feature are ambiguous and conflicting, and that again Petitioner did not proffer a proper rationale for combining the references.

Next, the Board discussed the challenge to independent claim 79 and its dependent claims 80-87. Again, the Board found that Petitioner failed to provide a sufficient reason why a person of ordinary skill in the art would have combined the teachings of Zheng with those of the other references in the matter asserted.

Finally, the Board reviewed the challenge to independent claim 90 and its dependent claims 91-104. Claim 90 includes one of the limitations from claim 1, and the Board again found that Petitioner did not provide sufficient evidence showing that one of ordinary skill in the art would have modified Yanagawa using the disclosure of Vellacott to practice the limitation.

TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00296; IPR2014-00297; IPR2014-00298
Paper 15 (00296 and 00297) and 19 (00298): Decision Denying Institution of Inter Partes Review
Dated: July 3, 2014
Patent 8,324,552 B2
Before: Justin T. Arbes, Barry L. Grossman, and Beverly M. Bunting
Written by: Bunting
Related Proceeding: Magna Electronics Inc. v. TRW Automotive Holding Corp., No. 1:12-cv-00654-PLM (W.D. Mich.)