Paper Entered: July 31, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper Entered: July 31, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD TRW AUTOMOTIVE US LLC, Petitioner, v. MAGNA ELECTRONICS, INC., Patent Owner. Case IPR Before JUSTIN T. ARBES, PATRICK R. SCANLON, and JO-ANNE M. KOKOSKI, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION Petitioner s Request for Rehearing 37 C.F.R

2 I. INTRODUCTION Petitioner TRW Automotive US LLC filed a Request for Rehearing (Paper 16, Req. Reh g ) of the Decision mailed June 26, 2014 (Paper 14, Decision ), which instituted inter partes review of claims 1, 8, 9, 18, 29, 30, 54, 62 64, and 70 of U.S. (Ex. 1002, the 023 patent ). In its request, Petitioner seeks reconsideration of our decision not to institute inter partes review with respect to claims 2 and 13 of the 023 patent. Req. Reh g 1. The Request for Rehearing is denied. II. STANDARD OF REVIEW In determining whether to institute an inter partes review of a patent, the Board may deny some or all grounds for unpatentability for some or all of the challenged claims. 37 C.F.R (b). When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. 37 C.F.R (c). The party requesting rehearing bears the burden of showing an abuse of discretion, and [t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked. 37 C.F.R (d). III. ANALYSIS A. Claim 13 Petitioner argues that the Board incorrectly construed the claim 13 phrase aim of the vehicle s headlights to specifically exclude switching between low beams and high beams. Req. Reh g 2. Petitioner asserts that the phrase should be construed, in view of the Specification of the 023 patent, to include switching between low beams and high beams, and, if so construed, inter partes review of claim 13 should be instituted. Id. at 3.

3 We initially note that Petitioner concedes that its Petition (Paper 3, Pet. ) did not set forth a proposed interpretation for the phrase aim of the vehicle s headlights (Req. Reh g 2), and therefore we cannot identify where the Petition supports the position that this phrase should be construed to include switching between low beams and high beams. We could not have misapprehended or overlooked something that was not presented in the Petition. Furthermore, a request for rehearing is not an opportunity to supplement the initial petition. Nevertheless, we are not persuaded by Petitioner s argument that we incorrectly construed the phrase in question. First, Petitioner s assertion that our claim construction specifically excludes switching between low beams and high beams mischaracterizes the interpretation. Petitioner s assertion appears to be based on our discussion on page 23 of the Decision regarding Petitioner s contention that Yanagawa (Ex. 1004) discloses varying the aim of a vehicle s headlights. Req. Reh g 2. This portion of the Decision stated that the passage of Yanagawa relied on by Petitioner merely describes executing tasks, such as controlling the headlight beams (i.e., switching between low beams and high beams) or issuing a warning to the driver. It does not describe varying the aim of the vehicle s headlights, as the term is properly construed. Decision 23. As such, we did not state that headlight aim cannot be varied by switching between low beams and high beams. Instead, we stated that Yanagawa describes controlling the headlight beams, but does not describe varying the aim of the vehicle s headlights specifically. 1 Indeed, the Petition does not point to any portion of Yanagawa that explicitly discloses that switching between low beams 1 Our indication that controlling the headlight beams includes switching between low beams and high beams was based on other portions of Yanagawa. See, e.g., Ex. 1004, 3 4 ( in the next step 108, the headlights are controlled to switch the headlights to low beams ). 3

4 and high beams will vary the aim of the vehicle s headlights. Nor does the Petition provide any basis to suggest that Yanagawa inherently or implicitly discloses that switching between low beams and high beams will vary the aim of the vehicle s headlights. Accordingly, we determined that, on the record before us, Petitioner had not established that Yanagawa discloses varying headlight aim. Second, Petitioner s reliance on the Specification of the 023 patent conflates the meaning of the phrase aim of the vehicle s headlights with techniques for varying the aim of a vehicle s headlights. The passage relied on by Petitioner states that control of headlamps 18 may be a binary control of the aim of the beam, such as by switching between lamps or lamp filaments, or may be a continuous variation of the aim of a single lamp more or less forward of the vehicle. Ex. 1002, 3: This passage describes (albeit in little detail) two ways in which the headlight aim can be varied. The passage does not provide a specific definition for the phrase aim of the vehicle s headlights ; nor does it suggest that the phrase has a meaning other than its ordinary meaning. We did not misapprehend or overlook this passage in construing the phrase aim of the vehicle s headlights. Instead, we construed the meaning of the phrase independent of techniques for varying the aim. Our construction did not include or exclude any particular way of varying the aim. For the foregoing reasons, Petitioner has not shown that the Board abused its discretion in denying the asserted ground of unpatentability of claim 13. B. Claim 2 Regarding claim 2, Petitioner argues that the Board failed to appreciate the evidence of record that in-cab mounting is a matter of equivalent design choice. Req. Reh g 3. Petitioner asserts that this evidence was presented in the analysis of 4

5 claim 1 set forth on pages of the Petition. 2 Id. at 4. The Board, however, considered the evidence and argument presented in the Petition but did not find it persuasive. Decision 25. Petitioner s argument here is merely disagreement with the Board s findings and conclusions. Such disagreement is not a sufficient basis on which to request rehearing. Nevertheless, we further address Petitioner s evidence and argument. Petitioner first notes that Yanagawa discloses that television camera 11 may be mounted at any location from which the forward direction of the vehicle can be imaged. Req. Reh g 4; Pet. 30, 32 (quoting Ex. 1004, 5). Petitioner does not elaborate on this assertion, but, presumably, Petitioner s point is that although Yanagawa does not explicitly disclose that television camera 11 is positioned in the vehicle cabin, the possibility of an in-cabin mounting is not ruled out. The mere possibility of in-cabin mounting, however, is not sufficient to render the claimed positioning obvious. Petitioner also asserts that the 023 patent does not disclose any particular unexpected advantage of placing the headlamp control assembly to view through the windshield. As such, the selection of a vantage point looking through the windshield is merely a matter of equivalent design choice. Req. Reh g 4; Pet. 30. The 023 patent, however, discloses that mounting image sensor 14 within the interior of the vehicle provides the advantage of substantially eliminat[ing] environmental dirt and moisture from fouling the light sensor module. Ex. 1002, 4:3 7. Petitioner has not explained adequately why, in view of this disclosed advantage, an in-cab mounting would have been merely a matter of equivalent design choice. 2 The claim 1 analysis was incorporated by reference into the arguments regarding claim 2. Req. Reh g 4; Pet

6 In addition, Petitioner asserts that [m]inor differences between the prior art and a claimed device may be a matter of design choice absent evidence to the contrary. Req. Reh g 4; Pet. 30, 32 (quoting In re Conte, 36 Fed. App x 446, 451 (Fed. Cir. 2002) (unpublished) (citing In re Rice, 341 F.2d 309, 314 (CCPA 1965))). Petitioner s reliance on this quotation from Conte, however, is misplaced in this instance. First, the quotation merely states that minor differences may be a matter of design choice absent evidence to the contrary; it does not state that all minor differences necessarily are matters of design choice absent evidence to the contrary. Moreover, the Conte quotation is a rephrasing of the conclusion from Rice that design changes that did not result in a difference in function or give unexpected results were no more than obvious variations consistent with the principles known in th[e] art of the patent at issue in that case. Rice, 341 F.2d at 314. In the present case, Petitioner has not cited persuasive evidence that the 023 patent s in-cab mounting disclosed as providing the advantage of substantially eliminating environmental dirt and moisture would not result in a difference in function or give unexpected results. Lastly, Petitioner argues that the obviousness of claim 1 is confirmed by the expert declaration of Jeffrey A. Miller. (1010 at 20-21). Req. Reh g 4; Pet. 31. We disagree. Dr. Miller s declaration (Ex. 1010) merely quotes the same passage from Yanagawa discussed above regarding the positioning of television camera 11 and then opines, without further support, that the selection of a vantage point looking through the windshield is merely a matter of equivalent design choice. Ex This analysis does not add to the arguments made in the Petition or Request for Rehearing, which are not persuasive for the reasons set forth above. Thus, we are not persuaded that the Board abused its discretion in denying the asserted ground of unpatentability of claim 2. 6

7 is denied. IV. ORDER Accordingly, it is hereby ORDERED that Petitioner s Request for Rehearing 7

8 PETITIONER: Josh Snider Timothy Sendek A. Justin Poplin LATHROP & GAGE LLP PATENT OWNER: Timothy A. Flory Terence J. Linn GARDNER, LINN, BURKHART & FLORY, LLP David K.S. Cornwell STERNE, KESSLER, GOLDSTEIN & FOX PLLC 8