iTakeaway: When challenging claims on the ground of obviousness, the petitioner must provide sufficient explanation and evidence for why the alleged combination of the prior art would be a simple substitution achieving predictable results or why the combination would have a reasonable expectation of success.
In its Decision, the Board held that Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the claims of the ’462 Patent, and denied institution of an inter partes review. The ’462 Patent describes a system for controlling a vehicle in response to detecting “objects of interest” in front of the vehicle using an image sensor that divides the scene in front of the vehicle into “a plurality of spatially separated sensing regions.”
The Board first discussed claim construction, stating that it interprets claims using the broadest reasonable construction. The first term construed by the Board was “pattern recognition.” The Board agreed with Petitioner’s construction of “the identification of objects based upon their shape, reflectivity, luminance, and spectral characteristics,” except that the terms “shape, reflectivity, luminance, and spectral characteristics” should be disjunctive rather than conjunctive because the claims themselves only require at least one of those terms. The Board then discussed the construction of the term “wherein objects are at least one of (a) qualified and (b) disqualified based, at least in part, on object motion in said field of view of said imaging sensor.” Neither party proposed a construction for this term. The Board looked to the specification to hold that “objects are at least one of (a) qualified and (b) disqualified” to mean that objects are at least one of determined to be objects of interest and determined to not be objects of interest.
The Board then examined the challenge to claims 1, 3, 5-7, 10, 15, 19, 23, 26, and 27 as anticipated by Kenue. The Board agreed with Patent Owner that Kenue does not on its face anticipate claims 1 or 23, the two independent claims, and that Petitioner’s expert’s testimony is not helpful because all it does is repeat the claim language.
The Board next turned to Petitioner’s obviousness grounds. Regarding the challenge to claims 1, 3, 5-8, 10, 15, 19, 21, 23, 26, and 27 as obvious over Yanagawa, Bottesch, and Wilson-Jones, the Board found that Petitioner’s analysis fell short because it was based on “mere conclusory statements” that cannot support an obviousness finding, such as stating that incorporating Bottesch into Yanagawa would be a “simple substitution” or “obvious to try” without providing explanation or evidence. The Board found the same deficiencies with Petitioner’s obviousness challenges to claims 11-13 based upon combining Aurora and Zheng with Kenue or Yanagawa, Bottesch, and Wilson-Jones, and claims 16 and 17 as obvious over Vellacott with either Kenue or Yanagawa, Bottesch, and Wilson-Jones.
TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00258
Paper 16: Decision Denying Institution of Inter Partes Review
Dated: June 26, 2014
Patent 7,994,462 B2
Before: Justin T. Arbes, Benjamin D.M. Wood, and Neil T. Powell
Written by: Wood
Related Proceedings: Magna Electronics, Inc. v. TRW Automotive Holdings Corp., No. 1:12-cv-00654-PLM (W.D. Mich. 2012); IPR2014-00266
