iTakeaway: To support an obviousness ground of unpatentability, a petitioner must provide a sufficient reason with rational underpinning as to why one of ordinary skill in the art would have been prompted to combine the teachings of the relied upon references.
In its Decision, the Board denied institution of inter partes review of claims 1, 2, 5–14, 16–21, 24, 26, 27, and 29–31 of the ’440 patent, because Petitioner did not establish a reasonable likelihood of prevailing with respect to at least one challenged claim.
The ’440 patent concerns a vehicle lighting control system in which a photosensor array senses light levels in a forward field of view. A portion of the array captures image data representative of an item of interest exterior of the vehicle and a characteristic of the item of interest is determined. A control of the vehicle responsive to the vehicular vision system sensing the presence of an object is performed.
With respect to claim construction, the Board indicated that none of the claim terms required an explicit construction.
Turning to the grounds of unpatentability, the Board noted that Petitioner relied upon the prior art reference, Yanagawa, as “part of, and necessary to, the proposed combination of references that allegedly renders the claims unpatentable.” However, according to the Board, Petitioner failed “to provide a sufficient reason with rational underpinning as to why one of ordinary skill in the art would have been prompted to combine the teachings of Yanagawa with those of the other three references to achieve the claimed systems.” The Petitioner merely asserted, for example, that Yanagawa was “properly combinable with Bottesch and/or Borcherts” to provide a different vehicle control signal option. The Board held that such an explanation that another option may have existed “does not explain why one of ordinary skill in the art would have been prompted to combine that option with the teachings of the other references at the time of the invention.”
The Board also criticized the declaration filed in support of the Petition, even though Petitioner did not cite to the declaration in support of its alleged rationale for combining Yanagawa. The Board noted that the declaration “largely parrots the Petition” and provides no additional reasons why one of ordinary skill in the art would have combined the references. For instance, the Board was not persuaded by comments in the declaration such as “[a]ny of the above listed references would be combinable to utilize and substitute the known and disclosed elements in the additional references.” Thus, the Board found that Petitioner failed to demonstrate a reasonable likelihood that claims 1, 2, 5, 6, 9–14, 18–21, 26, 27, 30, and 31 are unpatentable over Bottesch, Borcherts, Yanagawa, and Vellacott.
With respect to the asserted obviousness of dependent claims 7, 8, 16, 17, 24, and 29 based on the combination of Bottesch, Borcherts, Yanagawa, Vellacott, and Venturello, the Board held that Petitioner failed to establish a reasonable likelihood of prevailing. Petitioner did not provide any additional reasons why one of ordinary skill in the art would have been prompted to combine the references, and since Petitioner again relied upon Yanagawa, the Board held that Petitioner failed for the reasons discussed above.
TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00257
Paper 16: Decision Denying Institution of Inter Partes Review
Dated: June 26, 2014
Patent 8,203,440 B2
Before: Justin T. Arbes, Bart A. Gerstenblith, and Frances L. Ippolito
Written by: Gerstenblith
Related Proceeding: Magna Electronics Inc. v. TRW Automotive Holdings Corp., No. 1:12-cv-00654-PLM (W.D. Mich.)
