Takeaway: It is not sufficient for a petition to merely establish that all claim limitations are known in the prior art; the petition must also establish that it would have been obvious to combine the prior art elements as recited in the challenged claims.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any challenged claim.  The ‘726 patent relates to a vehicle accessory system that attaches to the interior of the windshield of the vehicle.

The Board first addressed Patent Owner’s argument that Petitioner failed to identify all real parties in interest. In particular, Patent Owner argued that Petitioner’s parent entities were real parties in interest.  However, the Board found Patent Owner’s arguments to be speculative and based on general evidence of parent/subsidiary relationships found in Petitioner’s Annual Reports.  The Board found that Patent Owner failed to set forth persuasive evidence that Petitioner was acting as a proxy of its parent.

Patent Owner also argued that the Petition was barred under 35 U.S.C. § 315(a)(1) “based on a counterclaim filed in related litigation.” According to Patent Owner, it filed a complaint against Petitioner but did not serve the complaint.  Before service of the complaint, Petitioner filed an Answer asserting invalidity as a counterclaim.  After filing the Answer and counterclaim, Petitioner filed the instant Petition.  Patent Owner concluded that the counterclaim should be considered “the beginning of a civil action challenging the validity of the patent,” and therefore bar the Petition.  The Board was not persuaded, stating that Section 315 bars a petition when a civil action is filed challenging validity but provides a specific exemption for a counterclaim.  Further, the Board noted that nothing in the record established that the counterclaim was treated by the court as anything other than a counterclaim.

Turning to claim construction, the Board noted that unexpired patent claims are given their “broadest reasonable construction in light of the specification of the patent.” The Board addressed the parties’ arguments regarding the terms “cooling means” and “imager.”  The Board construed “cooling means” under Section 112, paragraph 6, adopting a construction similar to that proposed by Petitioner.  The Board did not expressly construe the term “imager.”

The Board then turned to the asserted grounds of unpatentability based on Ponziana, Kakinami, and Kuehnle. The Board found that the Petition was ambiguous as to whether the asserted grounds were based on a combination of all three references or if Kakinami and Kuehnle were alternative secondary references and declined to speculate.  Analyzing the references, the Board agreed with Patent Owner that Petitioner failed to establish that the combination of two or three references would have rendered obvious the challenged claims.  The Board acknowledged that the references may disclose all of the claim limitations, but it is not sufficient to demonstrate that the claim elements were independently known.  Petitioner did not show that the claimed combination would have been obvious and failed to provide a rationale why a person of ordinary skill would have combined the elements as claimed, finding that Petitioner’s arguments and expert declaration, which was a “near verbatim recitation of the information in the Petition,” were conclusory.

TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00869
Paper 8: Decision Denying Institution of Inter Partes Review
Dated: December 1, 2014
Patent: 8,405,726 B2
Before: James P. Calve, Michael J. Fitzpatrick, and Barry L. Grossman
Written by: Grossman
Related Proceeding: Magna Electronics Inc. v. TRW Automotive Holdings Corp., No. 1:13-cv-00324 (W.D. Mich. 2013)