In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision Denying Institution of inter partes review of all of the challenged claims (i.e., claims 1–3, 9, 11, 12, 16, 20, 24, 26, and 28) of the ’261 Patent.  Petitioner had filed the Request for Rehearing based on the contention that the Board had abused its discretion in its denial of institution.

The Board first addressed the anticipation challenged based on Bottesch.  The Board indicated that in its Revised Petition, Petitioner had asserted that a particular claim function was performed by structure disclosed in a particular section of Bottesch.  But in Petitioner’s Request for Rehearing, according to the Board, Petitioner had instead argued that this section of Bottesch taught structure that was merely capable of performing the claimed function.  Because the Board found that the Petition had not argued disclosures showing that the structure in Bottesch was capable of performing the claimed function, the Board concluded that it did not overlook this argument in its denial of institution.

As for the proposed obviousness rejections based on Bottesch, Yanagawa, Vellacott, and Zheng, Petitioner had argued that the Board’s Decision Denying Institution “summarily ignores the motivation to combine discussion of Vellacott by focusing only on its edge detection embodiment—while ignoring the fact that the edge detection embodiment uses the same imputer as the rear view mirror headlight detection embodiment.”  In response, the Board indicated that its Decision focused on the portions of Vellacott where the Petition had asked it to focus, and that “the Petition did not tie the use of Vellacott’s CMOS image sensor and edge detection algorithm to the use of such an algorithm in what Petitioner now refers to in the Rehearing Request as ‘the rear view mirror headlight detection embodiment.’”  The Board went on to note that the Request for Rehearing’s motivation arguments were not set forth in the Petition and that is was not proper for such arguments to be raised for the first time on rehearing.

TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00259 
Paper 21: Decision on Petitioner’s Request for Rehearing 
Dated: August 28, 2014 
Patent 7,344,261 B2 
Before: Justin T. Arbes, Bart A. Gerstenblith, and Frances L. Ippolito
Written by: Gerstenblith