IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 Petition for Inter Partes Review of U.S. Patent No. 8,676,491 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Valeo North America, Inc., Valeo S.A., Valeo GmbH, Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd. Petitioners, v. Magna Electronics, Inc. Patent Owner U.S. Patent No.: 8,676,491 Filed: September 23, 2013 Issued: March 18, 2014 Inventors: David W. Taylor, Kevin C. McCarthy, Niall R. Lynam, and Kenneth Schofield Assignee: Magna Electronics, Inc. Title: DRIVER ASSIST SYSTEM FOR VEHICLE Inter Partes Review No. IPR2015- Mail Stop PATENT BOARD Patent Trial and Appeal Board United States Patent and Trademark Office Madison Building (East) 600 Dulany Street Alexandria, VA PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,676,491

2 TABLE OF CONTENTS I. INTRODUCTION... 1 II. MANDATORY NOTICES... 2 A. Real Party-In-Interest... 2 B. Related Matters Related Litigation and IPRs Related Applications... 2 C. Lead and Back-Up Counsel... 3 D. Service Information... 3 III. PAYMENT OF FEES... 3 IV. NONREDUNDANT GROUNDS... 4 V. REQUIREMENTS FOR INTER PARTES REVIEW... 6 A. Grounds for Standing... 6 A. Identification of Challenge The Specific Art and Statutory Grounds on Which the Challenge Is Based How the Construed Claims Are Unpatentable and Supporting Evidence Relied Upon to Support the Challenge... 9 VI. FACTUAL BACKGROUND...10 A. Declaration Evidence...10 B. The State of the Art...12 C. The Person Having Ordinary Skill In The Art ( PHOSITA )...14 D. The 491 Patent...15 i

3 E. Prosecution History of the 491 Patent...15 VII. BROADEST REASONABLE CONSTRUCTION...18 A. at least one of (i) vvv, (ii) www, (iii) xxx, (iv) yyy and (v) zzz.18 A. display intensity...21 VIII. GROUNDS OF UNPATENTABILITY ON WHICH PETITIONER IS LIKELY TO PREVAIL...21 A. Detailed Explanations of the Significance of the Evidence of Unpatentability of Claims 1-12 and a. Claim b. Claim c. Claim d. Claim e. Claim f. Claim g. Claim h. Claim i. Claim j. Claim k. Claim l. Claim m. Claim n. Claim o. Claim p. Claim ii

4 q. Claim IX. CONCLUSION...59 iii

5 EXHIBIT LIST Exhibit # Description 1001 U.S. Patent No. 8,676,491 ( the 491 patent ) 1002 Application Data Sheet filed with U.S. Patent Application Ser. No. 14/033, U.S. Patent No. 7,195,381 ( the 381 patent ) 1004 U.S. Patent No. 6,553,130 to Lemelson et al. ( Lemelson ) 1005 U.S. Patent Application Publication No. 2002/ to Huang et al. ( Huang ) 1006 European Patent Application Publication No. EP A2 of K.K. Toyoda Jidoshokki Seisakusho ( Toyoda ) 1007 U.S. Patent No. 6,100,811 to Hsu et al. ( Hsu ) 1008 U.S. Patent No. 5,920,367 to Kajimoto et al. ( Kajimoto ) 1009 U.S. Patent No. 6,226,061 to Tagusa ( Tagusa ) 1010 U.S. Patent No. 6,864,930 to Matsushita et al. ( Matsushita ) 1011 U.S. Patent No. 5,883,684 to Millikan et al. ( Millikan ) 1012 PCT International Publ. No. WO01/080353A1 of Gentex Corporation, inventors Turnbull et al. ( Turnbull ) 1013 Expert Declaration of Dr. Ralph V. Wilhelm, Ph.D., with Attachments 1014 U.S. Patent Application Serial No. 09/799,414, filed March 5, 2001, published as U.S. Patent Application Publication No. 2001/ , now U.S. Pat. No. 6,477, U.S. Patent Application Serial No. 09/793,002, filed February 26, 2001, published as U.S. Patent Application Publication No. iv

6 Exhibit # Description 2002/ , now U.S. Pat. No. 6,690, Provisional Application No. 60/263,680, filed Jan. 23, Provisional Application No. 60/271,466, filed Feb. 26, Provisional Application No. 60/315,384, filed Aug. 28, Provisional Application No. 60/346,733, filed Jan. 7, 2002 v

7 I. INTRODUCTION Petitioners Valeo North America, Inc., Valeo S.A., Valeo GmbH, Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd. (collectively, Valeo or Petitioners ) respectfully request inter partes review for claims 1-12 and ( the Challenged Claims ) of U.S. Patent No. 8,676,491 ( the 491 patent, attached as Ex. 1001) in accordance with 35 U.S.C and 37 C.F.R et seq. The claimed inventions of the 491 patent are directed generally to systems for assisting a driver of an automobile to detect and avoid collisions with objects in the path of the vehicle. Ex at 26:50-27:67. 1 As demonstrated by various prior art references, this type of automotive vision system was disclosed by others prior to the earliest effective filing date of the 491 patent, January 22, Moreover, each and every feature claimed in the Challenged Claims of the 491 patent was well-known in the art prior to the earliest effective filing date of the 491 patent, and the use of such features in automobile driver assist, telematics and information systems was likewise well known. The claim charts and arguments presented in Section VIII of this petition demonstrate by a preponderance of the evidence that the Lemelson, Huang, Hsu, 1 Citations are in the format: Ex. [#] at [page/column]:[line #]-[line #]. 1

8 Toyoda, Kajimoto, Millikan, Tagusa, Matsushita, and Turnbull references, taken in various combinations, render unpatentable each and every one of the Challenged Claims under pre-aia 35 U.S.C. 35 U.S.C. 103(a). II. MANDATORY NOTICES Pursuant to 37 C.F.R. 42.8(a)(1), Valeo provides the following disclosures. A. Real Party-In-Interest Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Valeo North America, Inc., Valeo S.A., Valeo GmbH, Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd., are the real parties-in-interest. B. Related Matters 1. Related Litigation and IPRs Pursuant to 37 C.F.R. 42.8(b)(2), Petitioner discloses that the 491 patent is asserted in pending litigation captioned Magna Electronics Inc. v. Valeo, Inc., et al., No. 2:14-cv (E.D. Mich.). The patents-in-suit are U.S. Patents 8,643,724, 8,543,330, and the 491 patent. In November 2014, Petitioner filed a petition requesting IPR of the 491 patent (IPR , instituted in part on June 3, 2015), and moved to stay the district court litigation pending IPR. The district court has not ruled on that motion to stay litigation. 2. Related Applications Continuation Application Serial No. 14/211,256, which matured into U.S. 2

9 Patent No. 9,014,966, claims the benefit of Application Serial No. 14/033,963, the application that matured into the 491 patent. Pending Appl n Ser. No. 14/641,812 filed on 3/9/15 claims the benefit of 14/211,256, as does pending Appl n Ser. No. 14/678,145 filed on 4/3/15. C. Lead and Back-Up Counsel Pursuant to 37 C.F.R. 42.8(b)(3), Petitioner provides the following designation of counsel: Lead Counsel Tammy J. Terry (Reg. No.: 69,167) terry@oshaliang.com OSHA LIANG LLP 909 Fannin Street, Suite 3500 Houston, TX Phone: (713) Fax: (713) Back-up Counsel Seema Mehta (Reg. No.: 56,235) mehta@oshaliang.com Aly Dossa (Reg. No.: 63,372) dossa@oshaliang.com Peter C. Schechter (Reg. No.: 31,662) schechter@oshaliang.com OSHA LIANG LLP 909 Fannin Street, Suite 3500 Houston, TX Phone: (713) Fax: (713) Pursuant to 37 C.F.R (b), a Power of Attorney accompanies this Petition. D. Service Information Pursuant to 37 C.F.R. 42.8(b)(4), papers concerning this matter should be served on lead and backup counsel whose service information is provided above. Petitioner consents to service of papers in this proceeding by . III. PAYMENT OF FEES The undersigned authorizes the Office to charge Deposit Account No. 50-3

10 0591 (Ref. No /015001) for the fee required by 37 C.F.R (a) for this Petition and any additional fees as may be required. IV. NONREDUNDANT GROUNDS On June 3, 2015, the Board instituted trial with respect to claims in IPR , but not with respect to claims 1-12 and 16-20, based upon the surprising finding that Petitioner identifie[d] only a disclosure in Kajimoto of the use of a single LED and did not rely on any of the other asserted references as disclosing the claimed plurality of white light emitting light-emitting diodes as required in independent claims 1 and 18 (and dependent claims 2-12, 17, and 19-20). This petition presents further, non-redundant grounds for IPR of these claims. Although several prior art references relied on herein were presented in IPR , this Petition presents for the first time new arguments, additional prior art references, and combinations that could not have been presented previously, and could not have been based on prior art searches previously performed and/or interpretations of those references then available to Petitioner. More specifically, unlike the Petition in the IPR, which relied on Kajimoto (Ex. 1008) for teaching, disclosing, or suggesting the claimed TFT liquid crystal display screen backlit by a plurality of white light emitting light emitting diodes, this Petition relies on Millikan to demonstrate that the number of 4

11 LEDs used to backlight an LCD panel was a routine matter of design choice at the time of the invention of the 491 patent, and that it was known that a plurality of LEDs may be used when the other components of the LCD display so require, in order to avoid undesirable dark spots. Moreover, Millikan, unlike Kajimoto, was not cited during original prosecution of the 491 patent. This issue affects each of Challenged Claims 1-12 and Challenged Claim 16 does not recite a plurality of LEDs but was nevertheless not instituted in the IPR because, according to the Board, while Toyoda discloses switching the in-vehicle display between its navigation system and rear camera display functions, Petitioner offer[ed] no detailed explanation [ ] to demonstrate that a vehicle information system, as claimed, encompasses a navigation system. The Board apparently overlooked Petitioner s explicit assertion in the proceeding that Lemelson, i.e., the primary reference, discloses switching the display between its functions of displaying, among other things, speed indicators (that is, one particular data type displayed by the claimed vehicle information system ) and the actual image data captured by a rearward facing camera, and that Toyoda was relied upon only to demonstrate the conventional use of the transmission gear selector to control the switching of the display between rear camera display and other functions. 5

12 Thus, this Petition does not present the same or substantially the same prior art or arguments as have been presented in any earlier proceeding. Therefore, to the extent the Board interprets 35 U.S.C. 325(d), (which is found in the section of the AIA relating to post-grant reviews but not in the provisions applicable to inter partes reviews), to apply to this inter partes review, the Director should not exercise discretion to deny institution of IPR under 325(d). This Petition presents combinations of prior art references and arguments not previously presented or considered by the Board and, therefore, includes sufficiently distinct grounds to warrant institution of inter partes review, the Director s statutory discretion under 35 U.S.C. 325(d) notwithstanding. Most importantly, this Petition provides a proper vehicle (no pun intended) for the Board to recognize that where the prior art discloses the use of a white light emitting LED to backlight an LCD panel, the particular number of such LEDs used in a specific LCD panel design to perform that function has no patentable significance, merely being a routine matter of design choice. V. REQUIREMENTS FOR INTER PARTES REVIEW As set forth below and pursuant to 37 C.F.R , each requirement for inter partes review of the 491 patent is satisfied. A. Grounds for Standing Pursuant to 37 C.F.R (a), Petitioner certifies that the 491 patent is 6

13 available for inter partes review and that the Petitioner is not barred or estopped from requesting inter partes review challenging the claims of the 491 patent on the grounds identified herein. Petitioner is not estopped with respect to any claim of the 491 patent based on any previous AIA proceeding, and the complaint served on Petitioner in the action referenced above in Section II(B) was served within the last 12 months. A. Identification of Challenge Pursuant to 37 C.F.R (b)(1), Petitioner requests inter partes review of claims 1-12 and of the 491 patent, and cancellation of the same. 1. The Specific Art and Statutory Grounds on Which the Challenge Is Based Pursuant to 37 C.F.R (b)(2), inter partes review of the 491 patent is requested in view of the following references: 2 (1) U.S. Patent No. 6,553,130 to Lemelson (Ex. 1004), issued April 22, 2003, from an application filed June 26, Lemelson is prior art to the 491 patent under at least 35 U.S.C. 102(e); (2) U.S. Patent Application Publication No. 2002/ to Huang (Ex. 1005), was published January 31, 2002, having been filed on September 25, The pre-aia versions of 35 U.S.C. 102 and 103 apply to the claims of the pre-aia 491 patent. 7

14 Huang is prior art to the 491 patent under at least 35 U.S.C. 102(e); (3) European Patent Application Publication No. EP A2 of Toyoda (Ex. 1006) was published on July 26, 2000, and is prior art to the 491 patent under at least 35 U.S.C. 102(b); (4) U.S. Patent No. 6,100,811 to Hsu (Ex. 1007), issued August 8, 2000, is prior art to the 491 patent under at least 35 U.S.C. 102(b); (5) U.S. Patent No. 5,920,367 to Kajimoto (Ex. 1008), issued July 6, 1999, is prior art to the 491 patent under at least 35 U.S.C. 102(b); (6) U.S. Patent No. 6,226,061 to Tagusa (Ex. 1009), issued May 1, 2001, from an application filed March 24, Tagusa is prior art to the 491 patent under at least 35 U.S.C. 102(a); (7) U.S. Patent No. 6,864,930 to Matsushita (Ex. 1010), issued March 8, 2005, from an application filed July 11, Matsushita is prior art to the 491 patent under at least 35 U.S.C. 102(e); (8) U.S. Patent No. 5,883,684 to Millikan (Ex. 1011), issued March 16, 1999, is prior art to the 491 patent under at least 35 U.S.C. 102(b); and (9) PCT International Publ. No. WO01/080353A1 of Turnbull (Ex. 1012), published October 25, 2001, is prior art to the 491 patent under at least 35 U.S.C. 102(a). The Challenged Claims of the 491 patent are unpatentable under pre-aia 8

15 35 U.S.C. 103(a) as being obvious over the prior art. Specifically: A. Claims 1-7, 9, 10, 16, and are unpatentable for obviousness over Lemelson in view of Huang, Kajimoto, Millikan, and Toyoda. B. Claims 8 and 17 are unpatentable for obviousness over Lemelson in view of Huang, Kajimoto, Millikan, Toyoda, and either Matsushita or Tagusa. C. Claim 11 is unpatentable for obviousness over Lemelson in view of Huang, Kajimoto, Millikan, Toyoda, and Hsu. D. Claim 12 is unpatentable for obviousness over Lemelson in view of Huang, Kajimoto, Millikan, Toyoda, and Turnbull. 2. How the Construed Claims Are Unpatentable and Supporting Evidence Relied Upon to Support the Challenge Pursuant to 37 C.F.R (b)(4), an explanation of how the Challenged Claims of the 491 patent are unpatentable under the statutory grounds identified above, including the identification of where each element of the claim is found in the prior art and a detailed explanation of the significance of the evidence (per 37 C.F.R (a)(2)), is provided in Section VIII below, in the form of claims charts and/or prose argument. Pursuant to 37 C.F.R (b)(5), the exhibit numbers of the supporting evidence relied upon to support the challenges and the relevance of the evidence to the challenges raised, including identifying specific portions of the evidence that support the challenges, are provided in Section VIII below. 9

16 VI. FACTUAL BACKGROUND A. Declaration Evidence This Petition is supported by the Declaration of Dr. Wilhelm. See Ex (Wilhelm Decl. ). Dr. Wilhelm provides his opinions with respect to the content and state of the prior art, the level of skill of a person having ordinary skill in the art at the time of the invention of the Challenged Claims (i.e., the hypothetical PHOSITA ) (Wilhelm Decl., 17-21), and what would have been obvious to that PHOSITA. Dr. Wilhelm is qualified to provide the above-mentioned opinions. He is currently the President of Wilhelm Associates, LLC, a consulting firm founded by him in 2001, specializing in automotive electronics, telematics, systems engineering, data communications between systems and devices, and product/market and business strategies. Dr. Wilhelm regularly provides advice and assistance in the development and use of market assessment methodologies, product requirement definitions, product design, product and market strategy, and product implementation in his areas of technical expertise. Wilhelm Decl., 2. Dr. Wilhelm s academic credentials are seen in his curriculum vitae (Attachment A to Ex. 1013). He was a Senior Research Scientist from 1971 to 1978 at General Motors Research Laboratories. He continued to work at General Motors in other senior position until 2001, first in General Motors Corporation s 10

17 AC Spark Plug Division and later at Delphi Delco Electronics Corporation. Wilhelm Decl., 3. He was the Department Head of Advanced Instruments & Display from 1984 to 1989, and then from 1989 to 1994, Director of Advanced Development/Systems Integration. During that time, Dr. Wilhelm oversaw the design and development of automotive technology systems, including, for example, a precursor system to the OnStar telematics system, navigation systems, advanced engine control systems, night vision systems, millimeter wave-based radar systems, and digital audio systems. From 1994 to 1997, Dr. Wilhelm was a Vice President of Engineering for the Asia/Pacific market, and oversaw product launches for audio, powertrain control, and security systems, as well as the codevelopment of advanced systems with Toyota, Honda, Holdens, Daewoo, and other vehicle OEMs. From 1997 to 2001, he was a Product Line Manager in the Mobile Multi-Media Systems division. In this role, Dr. Wilhelm managed product lines covering telematics, navigation, RSAV, and DSRC systems, some of which were later acquired and installed in vehicles by Toyota, General Motors, Honda, and Ford. Wilhelm Decl., 4. In addition to his academic credentials and employment experience, Dr. Wilhelm has authored dozens of published technical papers concerning automotive electronic systems. See Att. A to Ex He is a named inventor of three U.S. patents directed to methods of constructing automotive sensors. In the area of 11

18 automotive display technologies for use in monitoring real time operating conditions in vehicles, Dr. Wilhelm has been involved in the development of and/or has experience with providing sensor alerts from a wide variety of vehicle systems functions. In the area of automotive display technologies, he has worked specifically with vacuum fluorescent displays, cathode ray tubes, flat panel displays of different construction (e.g., LCD), head-up displays, and others. In the area of vehicle central processing units and various control systems, Dr. Wilhelm has experience with navigation systems, audio systems, telematics systems, collision avoidance, and collision warning systems, etc. Wilhelm Decl., 5. B. The State of the Art The 491 patent is directed toward camera-based driver assist systems, which have been known long before January 2002, the earliest effective filing date of any claim of the 491 patent. Drivers have always used visual perception to avoid collisions and to follow the roads. Therefore, the use of camera and other sensor systems to detect and respond to the surrounding environment to assist the driver of a vehicle was a natural choice to those in the relevant art, as soon as camera, sensing, and computing technology allowed. Wilhelm Decl., 22. As the claim charts and accompanying detailed analyses in Sec. VIII make clear, virtually the entire system recited in the Challenged Claims was already part of the state of the art, having been essentially described in Lemelson (Ex. 1004), a 12

19 prior art patent based on an original parent application that was filed more than eight years before the earliest effective filing date of the Challenged Claims. Wilhelm Decl., 23, 28. In those intervening eight years, technology continued to advance in the camera, sensor, display system, and computer fields. Thus, while Lemelson described the use of CCD cameras in 1993, CMOS cameras were known improvements over CCD technology by Wilhelm Decl., 29. Likewise, TFT LCD display screens, not widely known or commercially practical at the time of Lemelson s parent application in 1993, were also being introduced into automotive applications by the time the specification supporting the Challenged Claims was filed in Wilhelm Decl., 29. These are the only meaningful substantive distinctions between the state of art as described years earlier in Lemelson (Ex. 1004) and all but one (i.e., claim 11) of the Challenged Claims. 3 3 Dependent claim 11 merely adds the driver seat position memory function which was also commonplace by 2002, about which Lemelson was unconcerned. As Dr. Wilhelm explains, as soon as the investment in on-board computing power was made by the automobile makers, it was commercially necessary to incorporate as many features making use of that and other technologies in order to both justify the added cost and compete for customers who always prefer the latest and greatest features. Wilhelm Decl.,

20 Wilhelm Decl., 31. It should be kept in mind that during the mid/late-1980s to the mid-1990s, most technical leaders in the automotive space (both component suppliers and vehicle manufacturers) were eagerly developing and evaluating a variety of flat panel displays and associated drive mechanisms (e.g. TFT-LCD, TFEL, VFD, etc.) for use in automotive production applications. Wilhelm Decl., 30. C. The Person Having Ordinary Skill In The Art ( PHOSITA ) As explained by Dr. Wilhelm, a PHOSITA would have been a person with at least a bachelor s degree in electrical engineering, computer science, or physics, and would have had at least 2-5 years of experience with human factors for automotive design, i.e., for how humans interact with a display in a vehicle. Wilhelm Decl., 20. A PHOSITA in January 2002 would also have had a working understanding of microprocessor-driven controls for displays, actuators, and elementary decision making, and would have been comfortable working in a systems environment relating to instrumentation displays for new vehicles. Wilhelm Decl., 21. The level of ordinary skill in the art is further reflected by the prior art of record, Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001), and the PHOSITA is presumed to be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). 14

21 D. The 491 Patent The 491 patent is generally directed to a camera-based vehicle assist system for a vehicle. Ex. 1001, Title. Due to the patent prosecution strategy employed by Patent Owner, the Challenged Claims relate to subject matter that was added to an ever-growing specification by way of a number of continuation-in-part applications filed more than a decade before the actual filing date of the 491 patent. E. Prosecution History of the 491 Patent The 491 patent issued from application serial no. 14/033,963 ( the 963 application ) filed September 23, A non-final Office Action was issued on October 29, 2013, in which claims 1-20 were rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-89 of parent U.S. Patent No. 8,543,330. A terminal disclaimer was filed and accepted, and a Notice of Allowance was issued in due course. The 491 patent issued on March 18, During the course of prosecution of the 963 application, the applicants submitted an Information Disclosure Statement identifying approximately 1,775 references, in English and several foreign languages. Not a single prior art-based rejection was raised. Given the time and caseload pressures under with the Office s examiners work, it seems implausible that the examiner would have actually reviewed the mountain of prior art under which Applicants buried her. 15

22 The Application Data Sheet (Ex. 1002) filed with the 963 application includes a four-page list of prior applications to which the applicant s claimed benefit under 35 U.S.C. 119(e), 120, 121, or 365(n). Because the listed prior applications include continuation-in-part applications, a comparison of the specifically claimed subject matter of the Challenged Claims with the disclosures of the prior applications is required in order to determine the earliest effective filing date of the Challenged Claims, 4 and Petitioner has done so, with the following result. The 491 patent includes independent claims 1, 13, and 18. Each independent claim identically includes the following element: 4 Inter partes review is limited to challenges based only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications. 35 U.S.C. 311(b). However, in the present circumstances, the Board considers whether the Challenged Claims are entitled to the benefit of a priority claim, solely to determine whether a cited patent or printed publication is prior art. See, e.g., IPR , Paper No. 24 (Decision Institution of Inter Partes Review) at 8-14; IPR , Paper No. 13 (Decision Denying Institution of Inter Partes Review) at 7-11; and IPR , Paper No. 10 (Decision Institution of Inter Partes Review) at

23 a video display screen viewable by a driver of the equipped vehicle when the driver is normally operating the equipped vehicle, wherein said video display screen is operable to display images derived, at least in part, from image data captured by said CMOS camera with a display intensity of at least about 200 candelas/sq. meter for viewing by the driver of the equipped vehicle; While the 491 patent claims the benefit of older patent and provisional applications, the earliest application to which priority is claimed, and which includes a disclosure of a video display screen operable to display images derived, at least in part, from image data captured by said CMOS camera with a display intensity of at least about 200 candelas/sq. meter is U.S. Patent Application Ser. No. 10/054,633, filed January 22, 2002, titled Vehicle interior LED lighting system, which issued as U.S. Patent No. 7,195,381 ( the 381 patent, Ex. 1003), the relevant disclosure appearing in the 381 patent at column 62, lines Thus, the claim of priority is inoperative to the extent it asserts an earliest effective filing date of any claim of the 491 patent prior to January 22, 2002, because no earlier application to which priority was claimed contains any disclosure of the claimed video display screen operable to display images derived, at least in part, from image data captured by said CMOS camera with a 17

24 display intensity of at least about 200 candelas/sq. meter. 5 VII. BROADEST REASONABLE CONSTRUCTION Pursuant to 37 C.F.R (b), the Challenged Claims of the unexpired 491 Patent shall receive the broadest reasonable construction in light of the specification of the patent in which [they] appear[]. All claim terms not specifically addressed below have been accorded their broadest reasonable interpretations in light of the patent specification, including their plain and ordinary meanings to the extent a skilled artisan could determine such meaning. However, Petitioner contends that exactly the same interpretations would result from claim construction analyses performed in accordance with rules and precedent employed by the federal district courts when construing claim language of issued patents. A. at least one of (i) vvv, (ii) www, (iii) xxx, (iv) yyy and (v) zzz Each of Challenged Claims 1-4, 7-9, 16, and includes at least one element drafted in the format at least one of (i) vvv, (ii) www, (iii) xxx, and (iv) yyy or more items in a list of distinct elements. This claim format was used by 5 In support, Petitioner submits as Exhibits a copy of each patent application referred to in the 491 patent s priority claim filed before Jan. 22, 2002, and each provisional application filed within one year prior to Jan. 22,

25 Patent Owner at the time the application for the 491 patent was filed, i.e., in September 2013, in a manner that differs from its customary interpretation since the CAFC s 2004 decision in SuperGuide Corp. v. DirecTV Enter., Inc., 358 F.3d 870 (Fed. Cir. 2004). More specifically, this claim format was held in SuperGuide to require at least one of each identified category (the categories being indicated by vvv, www, xxx, yyy, etc.), in other words, a conjunctive list. In reaching that conclusion, the CAFC relied, in part, on the fact that the specification and drawings of SuperGuide s patent both described and illustrated the invention as requiring at least one selection from each of the recited categories, and that interpreting the phrase to mean any one or more of would have contradicted the purpose of the invention. SuperGuide, 358 F.3d at In contrast here, the 491 patent specification make clear beyond any doubt that the claim format was intended to signify a disjunctive list of alternatives, with the presence of any one or more in an accused instrumentality intended to give rise to infringement. For example, claim 7 recites when a reversing maneuver of the equipped vehicle is not being executed, said display screen is operable to display information associated with a vehicle information system, and wherein said information comprises at least one of (i) vehicle speed information, (ii) vehicle fuel level information, (iii) tire pressure status, (iv) direction information, (v) instrument 19

26 information and (vi) vehicle function information. A specification passage (col. 28, ll. 8-23) describing this aspect of the claimed invention states [t]he video screen may display an information display selected from the group consisting of, which is classic Markush group language signifying a disjunctive list. Included in the list are the claimed alternatives, i.e., a speedometer display, a fuel gage display, a status of inflation of tires display, a compass display, an engine coolant temperature display, an oil pressure display,. among others. Similarly, claim 3 recites wherein said visual cue at least one of (i) indicates distance to an object exterior of the equipped vehicle, (ii) indicates an intended path of travel of the equipped vehicle, (iii) indicates proximity to an object exterior of the equipped vehicle and (iv) highlights an object exterior of the equipped vehicle. The specification passage (col. 27, ll ) describing this aspect of the invention states, in part, that the intended path of travel and/or a distance grid can be electronically superimposed upon the video image from a reverse-aid camera, making clear again that at least one of (i), (ii), and (iii) means one and/or the other of a list of alternatives. Unlike the use of at least one of A, B, C, and D in SuperGuide, there is nothing to compel, let alone suggest, that each and every item in the claimed lists of alternatives is necessary, or is required by the purpose of the invention. In many instances, such an interpretation would lead to plainly nonsensical results. In sum, 20

27 all of the variations of at least one of a, b, c, and d as used in the claims should be construed to mean the same thing, that is, to introduce disjunctive lists of alternatives. Accordingly, a teaching of any one of the listed alternatives in any of the claim elements which recite the at least one of language found in the prior art is sufficient to render that element of the claim, in its entirety, disclosed in the prior art regardless of whether any of the other listed alternatives are also disclosed. A. display intensity The term display intensity appears in every independent claim of the 491 patent, and appears only twice in its specification, at 9:60-10:2 and 28: Because the 491 patent recites values for display intensity in candelas/sq. meter, which would have been known to a PHOSITA in 2002 as the SI units for luminance (Wilhelm Decl. 27), the term display intensity should be construed to mean luminance. VIII. GROUNDS OF UNPATENTABILITY ON WHICH PETITIONER IS LIKELY TO PREVAIL But for the fact that the Challenged Claims recite a few essentially trivial matters of design choice that were well known by January 2002, they would all be anticipated by Lemelson, which disclosed virtually the entirety of the claimed inventions years earlier. Wilhelm Decl., Lemelson discusses at length the ability to display a wide variety of information to the driver in the interior cabin of the vehicle. Specifically, Lemelson (Ex at 2:24-63; 6:46-55; 15:45-60; 21

28 Fig. 2) describes a reconfigurable display that is capable of high-information content, including auxiliary information such as route guidance (i.e., navigation) information, alpha-numeric messages, distances to and highlighting of objects and obstacles in all directions of vehicle travel, weather information, traffic information, etc., in addition to real-time video images from the one or more cameras mounted on the vehicle. Wilhelm Decl., 36. Relying on Lemelson as the primary reference, the following detailed explanations and claim charts demonstrate the unpatentability of the Challenged Claims. A. Detailed Explanations of the Significance of the Evidence of Unpatentability of Claims 1-12 and Lemelson (Ex. 1004) clearly discloses nearly each and every feature of all of the claims of the 491 patent. The following claim charts and detailed explanations demonstrate unpatentability of each of the Challenged Claims under 35 U.S.C. 103(a) by a preponderance of that evidence. a. Claim 1 The only substantive differences between the disclosure of Lemelson and claim 1 relate to the type of cameras used (the subject matter of Huang, Ex. 1005), and the type and construction detail of display screen used (the subject matter of Kajimoto, Ex. 1008, and Millikan, Ex. 1011). Wilhelm Decl.,

29 The motivation to substitute Huang s CMOS sensor for Lemelson s CCD array camera is recited in the Huang prior art patent itself (at [0004]), i.e., that CMOS sensors provide numerous manufacturing, operational, and size benefits over CCD arrays. Wilhelm Decl., 39. While Lemelson (Ex. 1004) can easily be read as requiring, and thus implicitly disclosing, that the in-dashboard display shows the rear-facing camera when the vehicle is in reverse gear, and shows other information when the vehicle is not in reverse, Petitioner has cited Toyoda (Ex. 1006) in an overabundance of caution to show that it was conventional before the earliest effective filing date of the Challenged Claims to use the vehicle s transmission to switch the in-vehicle display from whatever it is displaying while the vehicle is in a forward gear to a rear-facing camera view when the vehicle was put into reverse. Wilhelm Decl., Likewise, the motivation to use Kajimoto s TFT LCD display in automotive applications such as Lemelson is explicitly stated in Kajimoto itself (at 1:10-20). Wilhelm Decl., 40. In the Preliminary Response in IPR Patent Owner asserted, and the Board accepted, that Kajimoto described use of a single LED to backlight an entire LCD panel. While it may have been technically feasible to do so at the time 23

30 of the Kajimoto reference in conjunction with additional specialized apparatus for distributing the light produced by a single point source LED all along the edge of the light diffusing panel of an LCD device, no such additional apparatus to accomplish that function is anywhere disclosed in Kajimoto. That it was conventional and known to a PHOSITA by January 2002 when designing an LCD display device one without special apparatus for distributing light from a point source LED device along the edge of the light diffuser plate -- to employ a plurality of LEDs for backlighting to both provide sufficient backlight so that the display would be readable in daylight and further to prevent undesirable dark spots, is clearly demonstrated by Millikan. Wilhelm Decl., More particularly, Kajimoto (Ex. 1008) discloses (at 1:10-20, 10:15-18, 15:4-42; 12:3-24, and Fig. 8) the use of a TFT LCD display as an information display device in a car, and that the LCD panel includes LED edge-lighting to provide the required white plate source backlight component of the LCD device. Wilhelm Decl., 42. For the sake of argument only, Petitioner proceeds upon the highly unlikely assumption that a PHOSITA would have concluded from or understood Kajimoto as actually accomplishing LCD backlighting with but a single LED. Millikan (Ex. 1011), however, discloses (at 1:31-33 and 2:34-40) that the backlight must provide a substantially uniform distribution of light over the entire display in order to prevent undesirable dark spots, a design criterion well- 24

31 known and understood by a PHOSITA by January 2002 (Wilhelm Decl., 42-45), and that a way to accomplish this was to illuminate a generally rectangular parallelepiped light guide by a plurality of LEDs disposed along at least one edge of the light guide, as described and illustrated in Millikan. The prior art thus discloses the very same features as are recited in claim 1, and makes clear that one should use enough LEDs, including a plurality of them, if necessary based on the characteristics of the other components of the LCD device, so as to prevent undesirable dark spots. The combination of the familiar elements of Kajimoto and Millikan to yield no more than predictable results would have been obvious to a PHOSITA at the time of invention of the 491 patent. Wilhelm Decl., Finally, although Lemelson implicitly discloses an in-vehicle display that switches from a variety of other functions to the rear-facing camera when the vehicle s transmission is shifted into reverse, Toyoda is cited as explicitly disclosing this conventional feature already known to a PHOSITA at the time of the invention of the 491 patent. As was previously recognized by the Board in the Institution Decision in IPR (Paper 7, at 15-16), the activation of a display of a rear view camera when a vehicle is in reverse as part of a system to assist the driver of a motor vehicle in preventing accidents, as described by Lemelson, is the epitome of common sense, and is thus an obvious modification 25

32 in view of the Supreme Court s teachings in KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). See also, Wilhelm Decl., In view of the foregoing evidence and detailed explanations, claim 1 is unpatentable. The following chart maps the elements of the claim to the prior art and further illustrates the unpatentability of Challenged Claim 1. US 8,676,491 Claim 1 1. A driver assist system for a vehicle, said driver assist system comprising: a CMOS camera disposed at a vehicle equipped with said driver assist system and having a field of view exterior of the equipped vehicle; Where Disclosed In Prior Art References Lemelson (Ex. 1004) Other Prior Art References (as indicated) Abstract ( A system assists the driver of a motor vehicle in preventing accidents ) 6:31-35 ( The video camera 16 is preferably a CCD array camera generating successive picture frames with individual pixels being digitized for processing by the video preprocessor 51. The video camera 16 may also be implemented with other technologies ) Huang (Ex. 1005) at [0004] ( due to production cost and bulkiness of CCD, less expensive product such as a CMOS image sensor using conventional CMOS semiconductor technologies is a substitute. Besides having a lower production cost, CMOS image sensors generally have very low power consumption. 26

33 US 8,676,491 Claim 1 wherein said CMOS camera is mounted at the rear of the equipped vehicle; a video display screen viewable by a driver of the equipped vehicle when the driver is normally operating the equipped vehicle, wherein said video display screen is operable to display images derived, at least in part, from image data captured by said CMOS camera with a display intensity of at least about 200 candelas/sq Where Disclosed In Prior Art References Lemelson (Ex. 1004) Other Prior Art References (as indicated) Moreover, the number of components and size of a CMOS image sensor can be further reduced through higher level integration of circuits. ) 6:5-8 ( video scanning may be employed to identify and indicate distances between the controlled vehicle and objects to the rear of the controlled vehicle ) 6:47-49 ( Actual image data can be displayed in real time using video display 55 ) 6:47-49 ( Actual image data can be displayed in real time using video display 55 ) Kajimoto (Ex. 1008) at 1:10-20 ( In recent years, due to its light weight and low power consumption, a liquid crystal display device has been used in a variety of fields. Specifically, the liquid crystal display device, 27

34 US 8,676,491 Claim 1 meter for viewing by the driver of the equipped vehicle; Where Disclosed In Prior Art References Lemelson (Ex. 1004) Other Prior Art References (as indicated) for example, is used as an information display device for use in (a) instruments of a car ); 15:61-65 ( the liquid crystal display device of the present invention is characterized in that, preferably, luminance of the displaying surface of the liquid crystal panel is in a range of not less than 5 cd/m 2 and not more than 200 cd/m 2 when the illuminating means is lighted ) 6 6 The claimed and reference luminance ranges thus touch or overlap at the value of about 200 candelas per square. Where a claimed range overlap[s] or lie[s] inside [a] range[] disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 271 (CCPA 1976); In re Woodruff, 919 F.2d 1575, (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of about 1-5% while the claim was limited to more than 5%. 28

35 US 8,676,491 Claim 1 wherein a visual cue is displayed by said video display screen in conjunction with display of said captured image data, said visual cue comprising an electronicallygenerated overlay; wherein said video display screen comprises a TFT liquid crystal display screen backlit by a plurality of white light emitting light emitting diodes; Where Disclosed In Prior Art References Lemelson (Ex. 1004) Other Prior Art References (as indicated) 6:49-55 ( The image display may include highlighting of hazards, special warning images such as flashing lights, alpha-numeric messages, distance values, speed indicators and other hazard and safety related messages. Simulated displays of symbols representing the hazard objects as well as actual video displays may also be used to enhance driver recognition of dangerous situations. ) Kajimoto (Ex. 1008) at 10:15-18 and 15:4-42 (LCD device uses TFTs); 12:3-24 and Fig. 8 ( white plate light source includes blue LED combined with fluorescent substance and white substance for scattering fluorescence, yielding The court held that about 1-5% allowed for concentrations slightly above 5% thus the ranges overlapped.). 29

36 US 8,676,491 Claim 1 a human machine interface, said human machine interface comprising a user input; Where Disclosed In Prior Art References Lemelson (Ex. 1004) Other Prior Art References (as indicated) white LED backlit LCD device); Millikan (Ex. 1011) at 1:31-33 ( The backlight must provide a substantially uniform distribution of light over the entire display in order to prevent undesirable dark spots ), and at 2:34-40 ( The present invention comprises a generally rectangular parallelepiped light guide. The light guide is illuminated by a plurality of Light Emitting Diode (LED) dies disposed along at least one edge of the light guide. ) 16:11-19 ( A keyboard 82 and/or microphone (located, for example, in the steering wheel or steering wheel hub) of the vehicle and a speech recognition computer such as computer 25 may be employed by the driver to generate 30

37 US 8,676,491 Claim 1 wherein said user input comprises at least one of (i) a vocal input, (ii) [alternative not relied upon; omitted], (iii) [alternative not relied upon; omitted] and (iv) [alternative not relied upon; omitted]; wherein, during a reversing maneuver of the equipped vehicle, image data captured by said CMOS camera is displayed by said video display screen as video images so as Where Disclosed In Prior Art References Lemelson (Ex. 1004) Other Prior Art References (as indicated) command control signals for controlling the trip or navigational computer and effecting the display and/or playback of synthetic speech of select information on the location, direction of travel, distances to select locations, towns or cities, map information or other information as defined above. ) 16:11-19 (microphone) Toyoda (Ex. 1006) at [ ] ( vehicle 1 has a monochrome camera 2 for capturing the view from the vehicle rear. A monitor 4 for showing the image captured by 31

38 US 8,676,491 Claim 1 to assist the driver in reversing the equipped vehicle; and wherein, when a reversing maneuver of the equipped vehicle is not being executed, said display screen is operable to display information associated with at least one of (i) a navigational system, Where Disclosed In Prior Art References Lemelson (Ex. 1004) Other Prior Art References (as indicated) the camera 2 is located in the passenger compartment of the vehicle 1. The monitor 4 is a liquid crystal display and is also used as the monitor of a navigation system. The monitor 4 is normally used as the navigation system monitor. When a shift lever 5 is shifted into a reverse position, the monitor 4 shows the image captured by the camera 2. ) 15:45-16:38 ( it is noted that system 10 may also perform as a navigational computer informing the driver of the motor vehicle containing same 32

39 US 8,676,491 Claim 1 (ii) (iii) [alternatives not relied upon; omitted]. Where Disclosed In Prior Art References Lemelson (Ex. 1004) Other Prior Art References (as indicated) of the location of the vehicle by controlling the display 32 to cause it to display characters describing such location and/or a map showing the road or street. [sic] along which the vehicle is travelling and its location and direction of travel there along by means of an indicia such as an arrow.. Thus computer 11 may have (a) a microphone and analog to digital converter of speech signals connected thereto as well as (b) a short wave receiver of data and (c) an input keyboard as described. ) b. Claim 2 Claim 2 depends from and recites the driver assist system of claim 1 and further recites for the present purposes: wherein said visual cue is generated responsive to detection of an object exterior of the equipped vehicle by at least one of (i) object detection by a non-visual detector, [alternatives not relied upon]. Lemelson (Ex. 1004) thoroughly discloses the use of a variety of non-visual 33

40 detection systems for detecting objects and then alerting the driver of their presence with visual cues. Wilhelm Decl., As Lemelson explains (at 6:5-8), video scanning may be employed to identify and indicate distances between the controlled vehicle and objects to the rear of the controlled vehicle, and further (at 5:67-6:8) that an auxiliary range detection means comprises a range computer 21 which accepts digital code signals from a radar or lidar computer 14 which interprets radar and/or laser range signals from respective reflected radiation receiving means on the vehicle. In a modified form, video scanning and radar or lidar scanning may be jointly employed to identify and indicate distances between the controlled vehicle and objects to the rear of the controlled vehicle. Lemelson discloses providing visual cues regarding this information to the driver (at 6:49-55) as follows: The image display may include highlighting of hazards, special warning images such as flashing lights, alphanumeric messages, distance values, speed indicators and other hazard and safety related messages. Simulated displays of symbols representing the hazard objects as well as actual video displays may also be used to enhance driver recognition of dangerous situations. No further motivation to combine than is already present with respect to claim 1 is required for the patentability analysis of claim 2. Accordingly, claim 2 is unpatentable over the same combination of prior art references that render claim 1 obvious, as explained above. 34

41 c. Claim 3 Claim 3 also depends from and recites the driver assist system of claim 1, and further recites for the present purposes: wherein said visual cue at least one of (i) indicates distance to an object exterior of the equipped vehicle, [alternatives not relied upon]. Because Lemelson (Ex. 1004) specifically discloses (at 6:49-51) that the image display may include distance values (Wilhelm Decl., 33-37), no further motivation to combine than is already present with respect to claim 1 is required for the patentability analysis of claim 3, and dependent claim 3 is clearly unpatentable over the same combination of prior art references as are applied to claim 1 above. d. Claim 4 Like claims 2 and 3, claim 4 also depends from and recites the driver assist system of claim 1, and further recites for the present purposes: wherein said visual cue at least one of (i) highlights an object exterior of the equipped vehicle and [alternatives not relied upon]. Because Lemelson (Ex. 1004) specifically discloses (at 6:49-50) that the image display may include highlighting of hazards (Wilhelm Decl., 33-37), here too no further motivation to combine than is already present with respect to claim 1 is required for the patentability analysis of claim 4, and dependent claim 4 is clearly unpatentable over the same combination of prior art references as are applied to claim 1 above. 35