Trw Automotive U.S. LLC v. Magna Electronics Inc.

• Decision Date: 06 January 2016
• Docket Number: IPR2014-01347
• Parties: TRW AUTOMOTIVE U.S. LLC, Petitioner, v. MAGNA ELECTRONICS INC., Patent Owner. Patent 8, 508, 593 B1
• Court: Patent Trial and Appeal Board

TRW AUTOMOTIVE U.S. LLC, Petitioner, v. MAGNA ELECTRONICS INC., Patent Owner.

Patent 8, 508, 593 B1

No. IPR2014-01347

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 6, 2016

Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and BARRY L GROSSMAN, Administrative Patent Judges.

FINAL WRITTEN DECISION 35 U.S.C. § 318; 37 C.F.R. § 42.73

FITZPATRICK, Administrative Patent Judge.

I. INTRODUCTION

Petitioner TRW Automotive U.S. LLC ("TRW") filed a Petition to institute an inter partes review of claims 1-3, 6-12, 16, 18-31, 33-39, 76-80, and 82-85 of U.S. Patent No. 8, 508, 593 Bl (Ex. 1002, "the '593 patent"). Paper 1 ("Pet"). Patent Owner Magna Electronics Inc. ("Magna") filed a Preliminary Response. Paper 6 ("Prelim. Resp.").

In a February 26, 2015, Decision, we instituted trial on all challenged claims as follows:

(1)claims 1-3, 6-12, 16, 18-21, 23-31, 33-36, 38, 76-80, and 82-85 under 35 U.S.C. § 103(a)^[1] as obvious over Campbell (Ex. 1004^[2]), Goldbeck (Ex. 1005^[3]), and Kuehnle (Ex. 1006^[4]); and

(2)claims 22, 37, and 39 under 35 U.S.C. § 103(a) as obvious over Campbell, Goldbeck, Kuehnle, and Yanagawa (Ex. 1007^[5]).

Paper 7 ("Inst. Dec").

After institution, Magna filed a Patent Owner Response (Paper 9 ("PO Resp.")), and TRW filed a Reply thereto. Paper 13 ("Reply to PO Resp.").

Also before us is a Magna Motion to Exclude (Paper 16, "Mot."), TRW's Opposition thereto (Paper 19, "Opp."), and Magna's Reply thereto (Paper 21, "Reply to Opp.").

An oral hearing was conducted on October 7, 2015. A transcript of the argument is entered in the record. See Paper 24.

We have authority under 35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).

II. ANALYSIS

Magna moves to exclude Exhibits 1005, 1012, and 1013. Mot. 1.

Both of TRW's grounds of unpatentability rely on teachings from Exhibit 1005 (Goldbeck). Thus, its admissibility is critical to TRW's patentability challenges. For the reasons explained below, we exclude Goldbeck, which disposes of or moots all other issues in this inter partes review.

A. Relevant Procedural History

Exhibit 1005 (Goldbeck) was submitted by TRW with its Petition and, thus, "during a preliminary proceeding" as that phrase is used in our Rule governing objections and motions to exclude. See 37 C.F.R. § 42.64(b)(1); see also 37 C.F.R. § 42.2 ("Preliminary Proceeding begins with the filing of a petition for instituting a trial and ends with a written decision as to whether a trial will be instituted.").

Magna timely served objections to the admissibility of Exhibit 1005 on March 12, 2015, pursuant to the then-governing Rule. Ex. 2006^[6]; compare 37 C.F.R. § 42.64(b)(1) (2012) ("Any objection to evidence submitted during a preliminary proceeding must be served within ten business days of the institution of the trial") (emphasis added), with 37 C.F.R. § 42.64(b)(1) (2015) ("Any objection to evidence submitted during a preliminary proceeding must he filed within ten business days of the institution of the trial.") (emphasis added).

Our Rules provide a mechanism for parties to respond to evidentiary objections with supplemental evidence. 37 C.F.R. § 42.64(b)(2) ("The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection."). TRW did not serve any supplemental evidence in response to Magna's objections to Exhibit 1005. This fact is not in dispute.

In addition to objecting to the admissibility of Exhibit 1005, during trial Magna challenged the sufficiency of TRWs evidence that Exhibit 1005 constitutes a prior art printed publication. See PO Resp. 48-50; see also 35 U.S.C. § 311(b) ("A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent. . . only on the basis of prior art consisting of patents or printed publications.").

TRW responded to Magna's sufficiency of the evidence arguments by presenting counter-arguments that rely on two additional exhibits, which had not been previously filed. See Reply to PO Resp. 23-24 (citing Ex. 1012^[7]; Ex. 1013^[8]). First, TRW argued that "in a related ITC case ... the same Goldbeck reference was found to qualify as prior art under § 102(b)." Reply to PO Resp. 23 (citing Ex. 1012). Second, TRW argued that Exhibit 1005 references "IEEE, the copyright date of 1999, and the ISBN . . . (0-7803-4975-X)[, ] which links to the same Goldbeck article provided through the IEEE website indicating that Goldbeck was available as of October 5, 1999." Id. at 24 (citing Ex. 1013, at 001).

B. Discussion

Magna's objections to Exhibit 1005 are based on Federal Rules of Evidence ("FRE") 901 (authentication), Rules 801 and 802 (hearsay), and Rules 401 and 402 (relevance). Ex. 2006, 1-2; see also Mot. 3. For the reasons discussed below, Exhibit 1005 is excluded in its entirety under FRE 901 for lack of authentication.

With respect to lack of authentication, Magna objected as follows:

On its face, Goldbeck is a document listing two people affiliated with Robert Bosch GmbH (presumably as authors), bearing a 1999 copyright date. (Ex. 1005, p. 1005-001.) The Petition includes a single footnote referencing something titled "Intelligent Transportation Systems" in connection with the Goldbeck document, referencing a date range of "5-8 Oct. 1999, " and baldly alleging that the Goldbeck document is 35 U.S.C. § 102(b) prior art. (Paper No. 1, p. 2 n.4.) But neither the phrase "intelligent transportation systems" nor the date range of October 5-8, 1999, appear anywhere in Goldbeck.

Ex. 2006, 3; see also Mot. 3.

Rule 901(a) states: "To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is." Fed.R.Evid. 901(a). Thus, we first look to what TRW claimed Exhibit 1005 to be.

In that regard, the only identifying information provided by TRW is a footnote in its Petition. See Pet. 2 n.4. The footnote offers a purported bibliographic reference for Exhibit 1005 as follows: "Goldbeck et al., ^cLane detection and tracking by video sensors' Intelligent Transportation Systems, 5-8 Oct. 1999, pp.74-79.; prior art under § 102(b)." Id. Thus, TRW claimed that Exhibit 1005 was published during October 5-8 of 1999 in something called Intelligent Transportation Systems. Id. TRW did not cite or otherwise provide any evidence for this claim. Id^[9]

In its objections served March 12, 2015, Magna noted correctly that "neither the phrase 'intelligent transportation systems' nor the date range of October 5-8, 1999, appear[s] anywhere in Goldbeck." Ex. 2006, 3; see also Mot. 5 (noting the same); Ex. 1005 (lacking the quoted phrase and asserted date range). This fact is not in dispute. For perspective, we reproduce below a top portion of the first page of Exhibit 1005.

(IMAGE OMITTED)

In the reproduction shown above, only the title and authors of the article are provided. Magna's Motion seeks to exclude Exhibit 1005 because, among other things, TRW failed to produce evidence to show Goldbeck is in fact an October 5-8, 1999, printed publication from Intelligent Transportation Systems. Mot. 4.

In opposing the Motion to Exclude, TRW does not identify any evidence to support a finding that Exhibit 1005 is-as TRW claims-an article published October 5-8, 1999, in Intelligent Transportation Systems ^[10] Instead, TRW argues that Exhibit 1005 is self-authenticating "because it is an article from an IEEE periodical." Opp. 4. This is a circular argument. TRW has not cited any evidence to support the underlying premise on which its argument relies, i.e., that the Goldbeck article is from any IEEE periodical, let alone one called Intelligent Transportation Systems that purportedly was published October 5-8, 1999, as asserted in the Petition. We also note that it would be unusual for a journal or periodical to be "published" over the course of a four day period, as asserted by TRW.

TRW points out that Exhibit 1005 bears a copyright notice from "IEEE." Opp. 4; see also Ex. 1005 ("©1999 IEEE."). Although the copyright notice is probative that IEEE owns a copyright to the article, it is not probative that the article was ever published by IEEE or anyone else. See, e.g., Stryker Corp. v. Karl StorzEndoscopy-America, Inc., Case IPR2015-00677 (PTAB Sept. 2, 2015) (Paper 15) (citing 17 U.S.C. § 401 and explaining why a copyright notice does not establish when a document was publicly accessible under patent law). For the same reason, TRW's reliance on Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00010, Paper 59 (PTAB Feb. 24, 2014) ("Liberty Mutual") for its application of FRE 902(6) is misplaced.^[11] TRW draws our attention to Liberty Mutual's handling of an exhibit 1025 in that proceeding. See Opp. 4 (citing Liberty Mutual at 37). That exhibit, however, stated on its face: "Published in: Proceedings of ACM SIGMETRLCS 2001/Performance 2001, Cambridge, MA, June 2001, pages 245-256." See Liberty Mutual, CBM2012-00010, Ex. 1025. In contrast, Exhibit 1005 does not bear any statement of publication, let alone an identification of the medium in which it allegedly was published.

Lastly, TRW argues that Exhibit 1005 "indicates an International Serial Book Number (ISBN) '0-7803-4975-X', " which "provide[s] that Goldbeck is an IEEE publication from an IEEE periodical." Opp. 4 (quoting Ex. 1005). But, TRW utterly fails to support this argument with evidence.

We reproduce below a bottom portion of the first page of Exhibit 1005, which includes the indication (highlighting added) on which TRW's argument is based.

(IMAGE OMITTED)

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