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

Petition for Inter Partes Review of U.S. Patent No. 8,543,330 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.: 8,543,330 Filed: September 17, 2012 Issued: September 24, 2013 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 22313 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,543,330

TABLE OF CONTENTS I. INTRODUCTION... 1 II. MANDATORY NOTICES... 2 A. Real Party-In-Interest... 2 B. Related Matters... 2 1. Related Litigation... 2 2. Related Applications... 2 C. Lead and Back-Up Counsel... 3 D. Service Information... 4 III. PAYMENT OF FEES... 4 IV. REQUIREMENTS FOR INTER PARTES REVIEW... 4 A. Grounds for Standing... 4 B. Identification of Challenge... 5 1. The Specific Art and Statutory Ground(s) on Which the Challenge Is Based... 5 2. How the Construed Claims Are Unpatentable and Supporting Evidence Relied Upon to Support the Challenge... 7 V. FACTUAL BACKGROUND... 8 A. Declaration Evidence... 8 B. The State of the Art...10 C. The 330 Patent...12 D. Prosecution History of the 330 Patent...12 VI. BROADEST REASONABLE CONSTRUCTION...16 i

A. at least one of (i) vvv, (ii) www, (iii) xxx, (iv) yyy and (v) zzz 17 B. display intensity...20 C. human machine interface...20 VII. GROUNDS OF UNPATENTABILITY ON WHICH PETITIONER IS LIKELY TO PREVAIL...20 A. Claims 1-18, 22-24, 26, 29-30, 34-56, 58-74, and 76-88 are unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito...21 B. Claims 25, 57, 75, and 89 are unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito, and further in view of Schaefer...48 C. Claims 19, 20, and 21 are unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito, and further in view of Kajimoto (claim 19) and either He (claim 20) or Liu (claim 21)...50 D. Claim 27 is unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito, and claim 28 is unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito, and further in view of Schaefer and Secor...53 E. Claims 31-33 are unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito, and further in view of Hsu...54 VIII. CONCLUSION...55 ii

EXHIBIT LIST Exhibit # Description 1001 U.S. Patent No. 8,543,330 ( the 330 patent ) 1002 Request For Reconsideration dated June 24, 2013, excerpted from prosecution file of the 330 patent 1003 Application Data Sheet filed with U.S. Patent Application Ser. No. 13/621,382 1004 U.S. Patent No. 7,195,381 ( the 381 patent ) 1005 U.S. Patent No. 6,553,130 to Lemelson et al. ( Lemelson ) 1006 U.S. Patent No. 6,259,423 to Tokito et al. ( Tokito ) 1007 U.S. Patent No. 5,670,935 to Schofield et al. ( Schofield ) 1008 U.S. Patent No. 4,731,769 to Schaefer et al. ( Schaefer ) 1009 U.S. Patent No. 5,920,367 to Kajimoto et al. ( Kajimoto ) 1010 U.S. Patent No. 6,359,392 to He ( He ) 1011 U.S. Patent No. 6,593,011 to Liu et al. ( Liu ) 1012 U.S. Patent No. 5,289,321 to Secor ( Secor ) 1013 U.S. Patent No. 6,100,811 to Hsu et al. ( Hsu ) 1014 Expert Declaration of Dr. Ralph V. Wilhelm, Ph.D., with Attachments 1015 U.S. Patent Application Serial No. 09/799,414, filed March 5, 2001, published as U.S. Patent Application Publication No. 2001/0039475, now U.S. Pat. No. 6,477,464 1016 U.S. Patent Application Serial No. 09/793,002, filed February 26, 2001, published as U.S. Patent Application Publication No. 2002/0003571, now U.S. Pat. No. 6,690,268 iii

Exhibit # Description 1017 Provisional Application No. 60/263,680, filed Jan. 23, 2001 1018 Provisional Application No. 60/271,466, filed Feb. 26, 2001 1019 Provisional Application No. 60/315,384, filed Aug. 28, 2001 1020 Provisional Application No. 60/346,733, filed Jan. 7, 2002 iv

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 1-89 ( the Challenged Claims ) of U.S. Patent No. 8,543,330 ( the 330 patent, attached as Ex. 1001) in accordance with 35 U.S.C. 311 319 and 37 C.F.R. 42.100 et seq. The claimed inventions of the 330 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. 1001 at 26:57-27:34. 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 330 patent, January 22, 2002. Moreover, each and every feature claimed in the Challenged Claims of the 330 patent was well-known in the art prior to the earliest effective filing date of the 330 patent, and the use of such features in automobile driver assist, telematics and information systems was likewise well known. 1 This petition cites to various exhibits by citing page (or column) and line number references, as follows: Ex. [No.] at [page/column]:[lines]. 1

The claim charts and argument presented in Section VII of this petition, supported by the Declaration of Dr. Ralph V. Wilhelm (Ex. 1014), demonstrate by a preponderance of the evidence that the Lemelson, Schofield, Tokito and other identified prior art references render unpatentable each and every one of the Challenged Claims of the 330 patent. II. MANDATORY NOTICES Pursuant to 37 C.F.R. 42.8(a)(1), Valeo provides the following mandatory 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 Pursuant to 37 C.F.R. 42.8(b)(2), Petitioner states that the 330 patent is asserted in pending litigation captioned Magna Electronics Inc. v. Valeo, Inc, et al., No. 2:14-cv-10540 (E.D. Mich.). The patents-in-suit are U.S. Patents 8,643,724, 8,767,491, and the 330 patent. 2. Related Applications 2

Continuation Application Serial No. 14/211,256 is currently pending before the U.S. Patent and Trademark Office, and claims the benefit of Application Serial No. 13/621,382, which matured into the 330 patent. Application Serial No. 14/033,963, which matured into U.S. Patent No. 8,767,491, also claims the benefit of Application Serial No. 13/621,382. 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 77010-1034 Phone: (713) 228-8600 Fax: (713) 228-8778 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 77010-1034 Phone: (713) 228-8600 Fax: (713) 228-8778 Petition. Pursuant to 37 C.F.R. 42.10(b), a Power of Attorney accompanies this 3

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 e-mail. III. PAYMENT OF FEES The undersigned authorizes the Office to charge $66,400.00 (for this challenge of eighty-nine (89) claims) to the credit card designated and used for payment during e-filing as the fee required by 37 C.F.R. 42.15(a) for this Petition for inter partes review. The undersigned further authorizes payment for any additional fees that might be due in connection with this Petition to be charged to Deposit Account No. 50-0591 (Ref. No. 18096/014001). IV. REQUIREMENTS FOR INTER PARTES REVIEW As set forth below and pursuant to 37 C.F.R. 42.104, each requirement for inter partes review of the 330 patent is satisfied. A. Grounds for Standing Pursuant to 37 C.F.R. 42.104(a), Petitioner hereby certifies that the 330 patent is available for inter partes review and that the Petitioner is not barred or estopped from requesting inter partes review challenging the claims of the 330 patent on the grounds identified herein. The 330 patent has not been subject to a previous estoppel based proceeding of the AIA and the complaint served on 4

Petitioner in the action referenced above in Section II(B) was served within the last 12 months. B. Identification of Challenge Pursuant to 37 C.F.R. 42.104(b)(1), Petitioner requests inter partes review of claims 1-89 of the 330 patent, and that the Board cancel the same. 1. The Specific Art and Statutory Ground(s) on Which the Challenge Is Based Pursuant to 37 C.F.R. 42.104(b)(2), inter partes review of the 330 patent is requested in view of the following references, each of which is prior art to the 330 patent under 35 U.S.C. 102(a), (b), and/or (e): 2 (1) U.S. Patent No. 6,553,130 to Lemelson (Ex. 1005), issued April 22, 2003, from an application filed June 26, 1996. Lemelson is prior art to the 330 patent under at least 35 U.S.C. 102(e); (2) U.S. Patent No. 6,226,061 to Tokito (Ex. 1006), issued July 10, 2001, from an application filed August 17, 1998. Tokito is prior art to the 330 patent under at least 35 U.S.C. 102(a); (3) U.S. Patent No. 5,670,935 to Schofield (Ex. 1007), issued September 23, 1997, is prior art to the 330 patent under at least 35 U.S.C. 102(b); 2 The pre-aia versions of 35 U.S.C. 102 and 103 apply to the claims of the pre-aia 330 patent. 5

(4) U.S. Patent No. 4,731,769 to Schaefer (Ex. 1008), issued March 15, 1988, is prior art to the 330 patent under at least 35 U.S.C. 102(b); (5) U.S. Patent No. 5,920,367 to Kajimoto (Ex. 1009), issued July 6, 1999, is prior art to the 330 patent under at least 35 U.S.C. 102(b); (6) U.S. Patent No. 6,359,392 to He (Ex. 1010), issued March 19, 2002, from an application filed January 4, 2001. He is prior art to the 330 patent under at least 35 U.S.C. 102(e); (7) U.S. Patent No. 6,593,011 to Liu (Ex. 1011), issued July 15, 2003, from an application filed July 24, 2001. Liu is prior art to the 330 patent under at least 35 U.S.C. 102(e); (8) U.S. Patent No. 5,289,321 to Secor (Ex. 1012), issued Feb. 22, 1994, is prior art to the 330 patent under at least 35 U.S.C. 102(b); and (9) U.S. Patent No. 6,100,811 to Hsu (Ex. 1013), issued August 8, 2000, is prior art to the 330 patent under at least 35 U.S.C. 102(b). The Challenged Claims of the 330 patent are unpatentable under 35 U.S.C. 103(a) as being obvious over the prior art. Specifically: A. Claims 1-18, 22-24, 26, 29-30, 34-56, 58-74, and 76-88 are unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito; 6

B. Claims 25, 57, 75, and 89 are unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito, and further in view of Schaefer; C. Claims 19, 20, and 21 are unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito, and further in view of Kajimoto (claim 19) and either He (claim 20) or Liu (claim 21); D. Claim 27 is unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito, and claim 28 is unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito, and further in view of Schaefer and Secor; and E. Claims 31-33 are unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito, and further in view of Hsu. 2. How the Construed Claims Are Unpatentable and Supporting Evidence Relied Upon to Support the Challenge Pursuant to 37 C.F.R. 42.104(b)(4), an explanation of how the Challenged Claims of the 330 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, is provided in Section VII below, in the form of claims charts. Pursuant to 37 C.F.R. 42.104(b)(5), the appendix 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 7

support the challenges, are provided in Section VII below, in the form of claim charts. V. FACTUAL BACKGROUND A. Declaration Evidence This Petition is supported by the Declaration of Dr. Wilhelm. See Ex. 1014 (Wilhelm Decl. ). Dr. Wilhelm provides his opinions with respect to the content and state of the prior art (Wilhelm Decl. at 29-36), 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. at 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. at 2. Dr. Wilhelm s academic credentials are seen in his curriculum vitae (Attachment A to Ex. 1014). He was a Senior Research Scientist from 1971 to 8

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 AC Spark Plug Division and later at Delphi Delco Electronics Corporation. 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. Wilhelm Decl. at 3-4. 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. Wilhelm Decl. at 4. 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. at 4. 9

In addition to his academic credentials and employment experience, Dr. Wilhelm has authored dozens of published technical papers concerning automotive electronic systems. He is a named inventor of three U.S. patents directed to methods of constructing automotive sensors. In the area of 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, among others. Wilhelm Decl. at 5. B. The State of the Art The 330 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 330 patent. Drivers have always used visual perception to avoid collisions and 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 10

camera, sensing, and computing technology allowed. Wilhelm Decl. at 22. As the claim charts in Sec. VII 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. 1005), a 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. at 29. In those intervening eight years, technology continued to advance in the camera, sensor, and computer fields. Wilhelm Decl. at 30. In addition, desirable features unrelated to camera-related driver assist systems, such as navigation systems and automatic driver seat and mirror adjustment systems, 3 were already described and part of the state of the by the time the specification supporting the Challenged Claims was filed in 2002. Wilhelm Decl. at 57, 69-71. Simply put, the Challenged Claims merely recite the state of the art by their earliest effective filing date, and no more. 3 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. at 57. 11

C. The 330 Patent The 330 patent is generally directed to a driver 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 330 patent. The 330 patent includes four independent claims of insignificant difference in scope, with four accompanying highly duplicative sets of dependent claims. D. Prosecution History of the 330 Patent The 330 patent issued from Application Serial No. 13/621,382 ( the 382 application ) filed September 17, 2012. A single non-final Office Action was issued on June 11, 2013, in which claims 1-89 were rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-32 of parent U.S. Patent No. 8,121,787. The applicants traversed the rejections and asserted that a number of the elements of independent claim 1 were wholly absent from (and not suggested by) any claim of the 787 patent, including, among others, the driver assist system being operable to provide a display intensity of said displayed image data of at least about 200 candelas/sq. meter for viewing by the driver of the equipped vehicle. Request for Reconsideration dated June 24, 2013 (Ex. 1002), at 3. The applicants further asserted that the other 12

independent claims of the present application (along with their dependent claims) include similar elements. Id., at 4. At least with respect to the limitation specifying a numerical value for display intensity, the applicants were correct, as each of independent claims 1, 39, 59, and 76 of the 330 patent identically contains the same limitation: wherein said driver assist system is operable to provide a display intensity of said displayed image data of at least about 200 candelas/sq. meter for viewing by the driver of the equipped vehicle;. A Notice of Allowability was then issued without any further substantive examination, and without an accompanying Examiner s Statement of Reasons for Allowance. The 330 patent (Ex. 1001) was granted on September 24, 2013. During the course of prosecution of the 382 application, the applicants submitted an Information Disclosure Statement identifying approximately 1,772 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. The Application Data Sheet (Ex. 1003) filed with the 382 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 13

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 330 patent includes independent claims 1, 39, 59, and 76. As noted above, each independent claim identically includes the following limitation: wherein said driver assist system is operable to provide a display intensity of said displayed image data of at least about 200 candelas/sq. meter for viewing by the driver of the equipped vehicle;. While the 330 patent claims the benefit of older patent applications, the earliest application to which priority is claimed, and which includes a disclosure of a 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., IPR2012-00037, Paper No. 24 (Decision Institution of Inter Partes Review) at 8-14; IPR2013-00443, Paper No. 13 (Decision Denying Institution of Inter Partes Review) at 7-11; and IPR2013-00217, Paper No. 10 (Decision Institution of Inter Partes Review) at 8-10. 14

system operable to provide a display intensity of said displayed image data of at least about 200 candelas/sq. meter for viewing by the driver of the equipped vehicle 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. 1004). The relevant disclosure appears at column 62, lines 2-24, of the 381 patent as follows: Preferably, a single high-intensity power LED such as a white light emitting LED comprising a Luxeon Star Power LXHL-MW1A white light emitting LED having (at a 25 degree Celsius junction temperature) a minimum forward voltage of 2.55 volts, a typical forward voltage of 3.42 volts, a maximum forward voltage of 3.99 volts, a dynamic resistance of 1 ohm and a forward current of 350 milliamps, and available from Lumileds Lighting LLC of San Jose, Calif. is used as a backlight for the TFT LCD video screen. Alternately a plurality of such single high-intensity power LEDs (such as an array of two or of four such power LEDs) is placed behind the TFT LCD video screen so that the intense white light projected from the individual single high-intensity power LEDs passes through the TFT LCD element and through the transflective electrochromic element, preferably producing a display intensity as viewed by the driver of at least about 200 candelas/sq. meter; more preferably at least about 300 candelas/sq. meter; and most preferably at least about 400 candelas/sq. meter. Alternately, cold cathode vacuum fluorescent sources/tubes can be used for backlighting and optionally can be used in conjunction with LED backlighting. 15

Because no earlier application to which priority was claimed contains any disclosure of the claimed system operable to provide a display intensity of said displayed image data of at least about 200 candelas/sq. meter for viewing by the driver of the equipped vehicle, the earliest effective filing date of each Challenged Claim of the 330 patent is the filing date of the application for the 381 patent (Ex. 1004), i.e., January 22, 2002. 5 VI. BROADEST REASONABLE CONSTRUCTION Pursuant to 37 C.F.R. 42.100(b), the Challenged Claims of the unexpired 330 Patent shall receive the broadest reasonable construction in light of the specification of the patent in which [they] appear[]. Because claim interpretation standards used by courts in patent litigation are different from the claim interpretation standards used by the Office in claim examination proceedings (including inter partes review), any claim interpretations submitted for the purpose of demonstrating a reasonable likelihood of prevailing are neither binding upon litigants in any litigation, nor do such claim interpretations correspond to the construction of claims under the legal standards that are mandated to be used by 5 In support, Petitioner submits as Exhibits 1015-1020 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, 2002. 16

the courts in litigation. In addition, the interpretation of the claims presented either implicitly or explicitly herein should not be viewed as constituting, in whole or in part, Petitioner s own interpretation and/or construction of such claims for the purposes of the underlying litigation. Instead, constructions in this proceeding should be viewed only as constituting an interpretation of the claims under the broadest reasonable construction standard. 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. A. at least one of (i) vvv, (ii) www, (iii) xxx, (iv) yyy and (v) zzz Each of claims 1, 3, 18, 23, 24, 26, 33, 39, 42, 55, 56, 58, 59, 62, 76, 87, and 88 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 Patent Owner at the time the application for the 330 patent was filed, i.e., in September 2102, 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 17

(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 885-88. In contrast here, the 330 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 23 recites wherein said at least one user input comprises at least one of a vocal input and a non-vocal input, and claim 88 similarly recites wherein said at least one user input comprises at least one of (i) a vocal input, (ii) a non-vocal input, (iii) a keypad input and (iv) a touch sensitive input. The specification does not include the term non-vocal input, but passage mentioning vocal input (col. 3, ll. 58-61, in Summary of the Invention) states that the user input may comprise a vocal input from the driver of the vehicle to the remote source or service center, or may comprise a keypad input or the like, without affecting the scope of the present invention. Clearly, the invention does 18

not require both a vocal input and a non-vocal input, but instead only one or the other. Similarly, claim 18 recites wherein said video display is operable to display at least one of (i) an instruction, (ii) an icon, (iii) a character and (iv) a symbol. The specification at 8:38-43 makes clear beyond doubt that the listed possibilities are disjunctive alternatives, not conjunctive requirements: The visible display may comprise written instructions, icons (such as left and right arrows or the like), or any other characters or symbols or indicia which convey to the driver of the vehicle when/where to turn and/or which direction to travel in order to arrive at the targeted destination. 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 in the claims of the 330 patent, such an interpretation would lead to plainly nonsensical results. In sum, 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. 19

B. display intensity The term display intensity appears in every independent claim of the 330 patent, and appears only once in its specification, at 9:60-10:2. Because the 330 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. at 27), the term display intensity should be construed to mean luminance. C. human machine interface The term human machine interface appears in dependent claims 22, 55, and 88 and at no other place anywhere in the 330 patent. By 2002, the term was understood as describing the part of an electronic machine or device which serves for the information exchange between the operator/user and the machine/device, consisting of (1) operating elements for transfer of information from the operator to the machine, (2) displays, and (3) an inner structure (computing hardware and software). (Wilhelm Decl. at 28). Thus, the claim term human machine interface should be interpreted to mean the part of an electronic machine or device which serves for the information exchange between the operator/user and the machine/device. VII. 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, and/or features 20

already known as being desirably incorporated into automobiles, they would all be anticipated by Lemelson, which disclosed virtually the entirety of the claimed inventions years earlier. Wilhelm Decl. at 29-36. Relying on Lemelson as the primary reference, the following explanations and claim charts demonstrate the unpatentability of the Challenged Claims. A. Claims 1-18, 22-24, 26, 29-30, 34-56, 58-74, and 76-88 are unpatentable under 35 U.S.C. 103(a) as being obvious over Lemelson in view of Schofield and Tokito Lemelson (Ex. 1005) clearly discloses each and every important feature of nearly all of the claims of the 330 patent. Wilhelm Decl. at 36. With respect to 78 of the 89 Challenged Claims, the only substantive difference between the disclosure of Lemelson and these claims is the specifically claimed luminance value for the in-vehicle display, which appears in all four independent claims (1, 39, 59, 76). Wilhelm Decl. at 37. While Lemelson (Ex. 1005) can easily be read as requiring, and thus implicitly disclosing, that the in-dashboard display shows the video image from the rear-facing camera when the vehicle is in reverse gear, Petitioner has cited Schofield (Ex. 1007) in an overabundance of caution to show that it was conventional long before the earliest effective filing date of the Challenged Claims to use the vehicle s transmission to switch the in-vehicle display to a rear-facing camera when the vehicle was put into reverse. Wilhelm Decl. at 38. 21

The motivation to use an in-vehicle display having sufficient luminance to be seen in daylight conditions is self-evident; nonetheless, Tokito (Ex. 1006) contains exactly this teaching and is relied upon in Claim Chart 1 below pertaining to all of the independent claims. As just noted above, Schofield (Ex. 1007) is cited in Claim Chart 1 (and thus applied to all four independent claims) only to eliminate any need to explicitly rely on any principles of inherency for the disclosure in Lemelson that the in-vehicle display switches to the rear-facing camera when the vehicle is in reverse, notwithstanding Petitioner s belief that such disclosure is implicitly, necessarily, and thus inherently disclosed in Lemelson. Wilhelm Decl. at 41. Due to the highly repetitive nature of the four independent claims and their respective sets of dependent claims, often with little or no difference in scope, Petitioner presents the following series of claim charts identifying specifically the disclosure in each relied-upon reference for each and every limitation of each of the Challenged Claims. In the following charts, the Challenged Claims are not presented in numerical sequence, such a presentation being highly repetitive, confusing, and unduly long. Instead, subsets of Challenged Claims having identical or similar scopes are grouped together (at most four claims across, i.e., one for each of the four independent claims with their associated dependent claims), followed by the citation and quoted portion of the prior art reference 22

disclosing the same claimed subject matter. (In some instances, for the convenience of the reader, a cited passage of a prior art reference is repeated for different limitations of the same claim, rather than merely stating see above at page nn. ) Claim Chart 1 addresses independent claims 1, 39, 59, and 76, and dependent claims 2, 9, 22, 26, 48, 68, and 87, which dependent claims recite the same or similar elements as one or more of the four independent claims, and demonstrates that those Challenged Claims are unpatentable over Lemelson (Ex. 1005) in view of Schofield (Ex. 1007) and Tokito (Ex. 1006). Wilhelm Decl. at 40-43. Claim 1. A driver assist system for a vehicle, said driver assist system comprising: Claim Chart 1: Independent Claims 1, 39, 59, and 76, and Dependent Claims 2, 9, 22, 26, 48, 68, and 87 Claim 39. A driver Claim 59. A driver assist system for a assist system for a vehicle, said driver vehicle, said driver assist system assist system comprising: comprising: Claim 76. A driver assist system for a vehicle, said driver assist system comprising: See Lemelson (Ex. 1005), Abstract ( A system assists the driver of a motor vehicle in preventing accidents. ). [Claim 1 cont.] a rearward facing camera disposed at a vehicle equipped with said driver assist system and having a rearward field of view relative to the equipped vehicle; [Claim 39 cont.] a rearward facing camera disposed at a vehicle equipped with said driver assist system and having a rearward field of view relative to the equipped vehicle; a forward facing [Claim 59 cont.] a rearward facing camera disposed at a vehicle equipped with said driver assist system and having a rearward field of view relative to the equipped vehicle; a forward facing Claim 76 cont.] a camera disposed at a vehicle equipped with said driver assist system and having an exterior field of view relative to the equipped vehicle; 23

camera disposed at a vehicle equipped with said driver assist system and having a forward field of view relative to the equipped vehicle; camera disposed at a vehicle equipped with said driver assist system and having a forward field of view relative to the equipped vehicle; See Lemelson (Ex. 1005) at 6:36-41 ( Multiple cameras may be used for front, side and rear viewing and for stereo imaging capabilities suitable for generation of three dimensional image information including capabilities for depth perception and placing multiple objects in three dimensional image fields to further improve hazard detection capabilities. ); and 5:31-35 ( A television camera(s) 16 having a wide angle lens 16L is mounted at the front of the vehicle such as the front end of the roof, bumper or end of the hood to scan the road ahead of the vehicle at an angle encompassing the sides of the road and intersecting roads. ); and 6:5-8 ( video scanning and radar or lidar scanning may be jointly employed to identify and indicate distances between the controlled vehicle and objects ahead of, to the side(s) of, and to the rear of the controlled vehicle ). [Claim 1 cont.] a video display viewable by a driver of the equipped vehicle when normally operating the equipped vehicle, [Claim 39 cont.] a video display viewable by a driver of the equipped vehicle when normally operating the equipped vehicle, [Claim 59 cont.] a video display viewable by a driver of the equipped vehicle when normally operating the equipped vehicle, [Claim 76 cont.] a video display viewable by a driver of the equipped vehicle when normally operating the equipped vehicle, See Lemelson (Ex. 1005) at 6:47-49 ( Actual image data can be displayed in real time using video display 55 ). [Claim 1 cont.] wherein said video display is operable to display image data captured by said rearward facing camera; [Claim 39 cont.] wherein said video display is operable to display at least one of (i) image data captured by said rearward facing camera and (ii) [alternative not relied upon; [Claim 59 cont.] wherein said video display is operable to display at least one of (i) image data captured by said rearward facing camera and (ii) [alternative not relied upon; [Claim 76 cont.] wherein said video display is operable to display image data captured by said camera; 24

omitted]; omitted]; See Lemelson (Ex. 1005) at 6:47-49 ( Actual image data can be displayed in real time using video display 55 ). [Claim 1 cont.] [Claim 76 cont.] wherein said driver wherein said driver assist system is assist system is operable to detect operable to detect objects present in objects present in said rearward field said exterior field of view of said of view of said rearward facing camera; camera; [Claim 39 cont.] wherein said driver assist system is operable to at least one of (i) detect objects present in said rearward field of view of said rearward facing camera and (ii) [alternative not relied upon; omitted]; [Claim 59 cont.] wherein said driver assist system is operable to at least one of (i) detect objects present in said rearward field of view of said rearward facing camera and (ii) [alternative not relied upon; omitted]; See Lemelson (Ex. 1005) at 6:5-8 ( video scanning may be employed to identify and indicate distances between the controlled vehicle and objects ahead of, to the side(s) of, and to the rear of the controlled vehicle ); 8:66-9:6 ( parameter input file contains necessary information to make control decision including presence or absence of obstructions or objects to the front, rear, or to either side of the vehicle ). [Claim 1 cont.] wherein said driver assist system is operable to provide a display intensity of said displayed image data of at least about 200 candelas/sq. meter for viewing by the driver of the equipped vehicle; [Claim 39 cont.] wherein said driver assist system is operable to provide a display intensity of said displayed image data of at least about 200 candelas/sq. meter for viewing by the driver of the equipped vehicle; [Claim 59 cont.] wherein said driver assist system is operable to provide a display intensity of said displayed image data of at least about 200 candelas/sq. meter for viewing by the driver of the equipped vehicle; [Claim 76 cont.] wherein said driver assist system is operable to provide a display intensity of said displayed image data of at least about 200 candelas/sq. meter for viewing by the driver of the equipped vehicle; See Tokito (Ex. 1006) at 10:29-45 ( [Direct-Viewing Display] In the abovementioned structure, the projector type display has been described. However, since the organic EL panel 48 performs display by spontaneous luminescence, this panel can be used as a direct-viewing display. The organic EL panel 48 according to the present embodiment has a resonator portion including the dielectric mirror 12 and 25

the metal electrode 20. Therefore, light with high directivity is emitted in the direction of the front face of the organic EL panel 48. For this reason, it is possible to provide a display which features high visibility with high luminance for a viewer in front of the screen but has lower visibility for viewing from other directions. By the organic EL panel 48 shown in FIG. 10, characters were displayed with a duty ratio of 1/32 and a voltage of 10V. When measured in front of the display screen, the luminance was 500 cd/m 2. ). [Claim 1 cont.] wherein said driver assist system is operable to provide a visual alert to the driver of the equipped vehicle responsive to detection of an object rearward of the equipped vehicle during a reversing maneuver of the equipped vehicle; [Claim 39 cont.] wherein said driver assist system is operable to provide a visual alert to the driver of the equipped vehicle responsive to detection of an object exterior of the equipped vehicle; [Claim 59 cont.] wherein said driver assist system is operable to provide a visual alert to the driver of the equipped vehicle responsive to detection of an object exterior of the equipped vehicle; [Claim 76 cont.] wherein said driver assist system is operable to provide a visual alert to the driver of the equipped vehicle responsive to detection of an object exterior of the equipped vehicle; See Lemelson (Ex. 1005) at 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. ). Regarding the during a reversing maneuver of the equipped vehicle language of claim 1, see Schofield (Ex. 1007) at 10:29-55 ( In order to further enhance the driver's understanding of what is occurring in the area surrounding the vehicle, a rearview vision system 12'" includes a display 20'" having image enhancements (FIG. 6). In the illustrative embodiment, such image enhancements include graphic overlays 70a, 70b which are hash marks intended to illustrate to the driver the anticipated path of movement of vehicle 10. In the illustrated embodiment, the anticipated vehicle motion is a function of the vehicle direction of travel as well as the rate of turn of the vehicle. The forward or rearward direction of vehicle travel is determined in response to the operator placing the gear selection device (not shown) in the reverse gear position. The degree of turn of the vehicle may be 26

determined by monitoring the movement of the vehicle steering system, monitoring the output of an electronic compass, or monitoring the vehicle differential drive system. In the embodiment illustrated in FIG. 6, the configuration of graphic overlays 70a, 70b indicates that the vehicle is in reverse gear and that the wheels are turned in a manner that will cause the vehicle to travel toward the driver's side of the vehicle. If the wheels were turned in the opposite direction, graphic overlays 70a, 70b would curve clockwise toward the right as viewed in FIG. 6. If the vehicle's wheels were straight, graphic overlays 70a, 70b would be substantially straight converging lines. If the vehicle is not in reverse gear position, graphic overlays 70a, 70b are not presented. ). [Claim 1 cont.] wherein said driver assist system is operable to provide an audible alert to the driver of the equipped vehicle responsive to detection of an object rearward of the equipped vehicle during a reversing maneuver of the equipped vehicle; and [Claim 39 cont.] wherein said driver assist system is operable to provide an audible alert to the driver of the equipped vehicle responsive to detection of an object exterior of the equipped vehicle; and [Claim 59 cont.] wherein said driver assist system is operable to provide an audible alert to the driver of the equipped vehicle responsive to detection of an object exterior of the equipped vehicle; [Claim 76 cont.] wherein said driver assist system is operable to provide an audible alert to the driver of the equipped vehicle responsive to detection of an object exterior of the equipped vehicle; See Lemelson (Ex. 1005) at 9:55-65 ( Continuous or discrete warnings can be generated on the output. Possibilities include continuously variable audible alarms, or others arrangements with possible combinations of visible and audible alarms. Warning indicators can be combined with actual video displays of vehicle situations including hazards and nearby objects. The synthetic speech signal generator 27 of FIG. 1 may be used to generate synthetic speech signals defining spoken alarm warnings. ). [Claim 1 cont.] wherein said visual alert comprises electronically generated indicia that overlay said [Claim 39 cont.] wherein said visual alert comprises electronically generated indicia that overlay said [Claim 59 cont.] wherein said visual alert comprises electronically generated indicia that overlay said [Claim 76 cont.] wherein said visual alert comprises electronically generated indicia that overlay said 27

image data displayed by said video display, and image data displayed by said video display, and image data displayed by said video display, and image data displayed by said video display, and See Lemelson (Ex. 1005) at 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. ). [Claim 1 cont.] wherein said electronically generated indicia at least one of (i) indicate distance to a detected object rearward of the equipped vehicle and (ii) [alternative not relied upon; omitted]. 2. The driver assist system of claim 1, wherein said electronically generated indicia indicate distance to a detected object rearward of the equipped vehicle. [Claim 39 cont.] wherein said electronically generated indicia at least one of (i) indicate distance to a detected object exterior of the equipped vehicle and (ii) [alternative not relied upon; omitted]. [Claim 59 cont.] wherein said electronically generated indicia at least one of (i) indicate distance to a detected object exterior of the equipped vehicle and (ii) [alternative not relied upon; omitted]; and [Claim 76 cont.] wherein said electronically generated indicia at least one of (i) indicate distance to a detected object exterior of the equipped vehicle and (ii) [alternative not relied upon; omitted]; and See Lemelson (Ex. 1005) at 6:5-8 ( video scanning may be employed to identify and indicate distances between the controlled vehicle and objects ahead of, to the side(s) of, and to the rear of the controlled vehicle ); 6:49-51 ( The image display may include distance values ). 22. The driver assist system of claim 1, comprising a [Claim 59 cont.] at least one user input, wherein at least one of (i) [Note: the final element of independent claim 76 appears below 28

human machine interface, said human machine interface comprising at least one user input. 26. The driver assist system of claim 22, wherein at least one of (i) [alternative not relied upon; omitted], (ii) said at least one user input comprises at least one input for a navigational system of the equipped vehicle, (iii) [alternative not relied upon; omitted], (iv) [alternative not relied upon; omitted] and (v) [alternative not relied upon; omitted]. [alternative not relied upon; omitted], (ii) said at least one user input comprises at least one input for a navigational system of the equipped vehicle, (iii) [alternative not relied upon; omitted], (iv) [alternative not relied upon; omitted] and (v) [alternative not relied upon; omitted]. in this Claim Chart 1; dependent claim 87 is presented here, however, due its similarity in scope to independent claim 59 and dependent claim 26.] 87. The driver assist system of claim 76, comprising at least one user input, wherein at least one of (i) [alternative not relied upon; omitted], (ii) said at least one user input comprises at least one input for a navigational system of the equipped vehicle, (iii) [alternative not relied upon; omitted], (iv) [alternative not relied upon; omitted] and (v) [alternative not relied upon; omitted]. See Lemelson (Ex. 1005) at 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 command control signals for controlling the trip or navigational computer and effecting the display and/or playback of synthetic speech of select 29