On December 1, 2015, the International Trade Commission (ITC) rendered an opinion In the Matter of Certain Vision-Based Driver Assistance System Cameras, Components Thereof, and Products Containing the Same, investigation no. 337-TA-907.  The Opinion covered ten separate questions; however, only two are discussed here.  Those two questions cover aspects of interpretation of functional claim language, and interpretation of claims that recite user-action.

The Commission instituted this investigation on January 28, 2014, based on a complaint filed by Magna Electronics Inc. ("Magna") of Auburn Hills, Michigan.  The complaint alleged violations of section 337 by reason of infringement of certain claims of U.S. Patent Nos. 8,116,929 ("the '929 patent") and 8,593,521 ("the '521 patent") and that an industry in the United States exists or is in the process of being established as required by subsection (a)(2) of section 337.  The complaint names TRW Automotive U.S., LLC of Livonia, Michigan as the respondent.  The Office of Unfair Import Investigations was named as a party to the investigation.  Later, Magna filed a motion to amend the complaint and notice of investigation to add U.S. Patent Nos. 8,686,840 ("the '840 patent) and 8,692,659 ("the '659 patent").  Further motions were filed to terminate the investigation with respect to the '521 patent and the '929 patent.  The administrative law judge (ALJ) issued his final initial determination (ID) finding no violation of section 337 because he found that TRW did not indirectly infringe the '840 and '659 patents and that the '840 patent was invalid.

Petitions for review were submitted for ten separate questions.  The only topics discussed here for this post include (i) whether the asserted claims of the '659 patent require a camera, and (2) whether the claims are invalid under the America Invents Act.

Whether the asserted claims of the '659 patent require a camera

Claim 1 of the '659 patent is reproduced below.

1.    An accessory mounting system for a vehicle, said accessory mounting system comprising:
    an attachment element adhesively attached at an in-cabin surface of a vehicle windshield of a vehicle equipped with said accessory mounting system;
    said attachment element comprising a mirror mounting button;
    a plurality of attachment members adhesively attached at the in-cabin surface of the vehicle windshield local to said attachment element;
    an interior rearview mirror assembly comprising a mirror head and a mirror support;
    wherein said mirror head comprises a minor reflective element and a mirror casing;
    wherein said mirror support comprises a mirror mount that is configured to mount said interior rearview minor assembly to said mirror mounting button of said attachment element;
    a structure configured for mounting to said plurality of attachment members attached at the in-cabin surface of the vehicle windshield;
    said structure configured to receive and be supported by said plurality of attachment members that are adhesively attached at the in-cabin surface of the vehicle windshield;
    wherein said structure is configured to accommodate a forward facing camera; and
    wherein, with said structure received by and supported by said attachment members and when said structure is accommodating said forward facing camera, said forward facing camera has a field of view through the vehicle windshield.

The Commission found that the asserted claims do not require a camera due to the functional claim language of "configured to".

The claims at issue here are generally related to an "accessory mounting system," and this preamble language provides guidance that the focus of the claims is not on the camera but on an accessory mounting system.  Claim 1 (and other claims in the '659 patent) do not explicitly recite a camera as a component of the invention, but rather claim a structure that is "configured to accommodate a forward facing camera."  The focus of the '659 patent specification is similarly on an "accessory mounting system" and does not describe a camera as part of the invention.

The Commission stated that to a skilled artisan reading the claims in light of the specification, these claims are understood to be directed to a structure mounted upon a vehicle windshield that is capable of accommodating certain accessories.

The Federal Circuit, the Commission, and district court precedents support finding that the claim language "configured to" and "wherein . . . when" appearing in conjunction with the term camera in the asserted claims limit these claim limitations to the primary recited mounting structure and do not extend to the secondary structure for which the recited feature is configured.

The Commission noted that Federal Circuit precedent is clear that when a first structure is "capable of" or "configured to" interact with a second component, the claim may be infringed even in the absence of the second component.  An example case noted was Revolution Eyewear, in which the claim term at issue was "said first magnetic members capable of engaging second magnetic members of an auxiliary spectacle frame so that lenses of an auxiliary spectacle frame are located in front of said primary lenses," and the Court determined that the primary lens satisfied the claim element and the auxiliary frames were not an infringing element.  Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1363 (Fed. Cir. 2009).

The Commission also noted that district court decisions further support this position.  An example case noted was Flexhead Indus., Inc. v. Easyjlex, Inc., in which the court construed "configured to receive the fire protection sprinkler head" such that "[t]he invention must be set up in a particular manner to receive sprinkler heads, but this does not mean that it must actually receive the sprinkler head."  Flexhead Indus., Inc. v. Easyjlex, Inc., No. CIV. 06-11897-DPW and 06-11898-DPW, 2008 WL 4813797, at *7 (D. Mass. Nov. 3, 2008).

The Commission also noted that, in contrast to the language of the asserted claims of the '659 patent, other related patents explicitly recite a camera as a claim limitation.  For example, the '840 patent and U.S Patent No. 7,460,007, which are related to the '659 patent, each claim an accessory system.  The claims from each of these patents, however, explicitly require a camera.  The Commission thus concluded that the inventors knew how to claim a camera and expressly did so in other related applications, but did not use such language in the asserted claims of the '659 patent.

This result is favorable for those who prefer to draft claims using functional language.  In instances in which claims recite "configured to" or "capable of", such language often provides a broader claim term than reciting actual functions that are performed.

Furthermore, if the Commission adopted the contention that the claims require a camera, the inclusion of that limitation would substantially read out the "configured to" limitations of the clause "wherein said structure is configured to accommodate a forward facing camera".  It's worth noting that "configured to" saved the claim from requiring a camera, because had the limitation been drafted as "wherein said structure accommodates a forward facing camera," this is likely to have been interpreted as a positive recitation that the structure actually houses a camera.

Whether the claims are invalid under the America Invents Act

TRW argues that the claims 91 and 92 of the '659 patent require the presence of a person and therefore, are directed to patent ineligible subject matter.  Specifically, TRW contends that claims 91 and 92 of the '659 patent claim "a viewer" and Magna's expert testified the claimed viewer is a person; therefore, under the America Invents Act ("AIA") § 33(a), claims 91 and 92 are invalid.

Claims 91 and 92 of the '659 patent are reproduced below.

91.    The accessory mounting system of claim 90, wherein a light absorbing layer disposed at the vehicle windshield at least partially masks the presence of said attachment element from view by a viewer who is viewing from outside the equipped vehicle through the vehicle windshield.

92.    The accessory mounting system of claim 91, wherein said light absorbing layer disposed at the vehicle windshield further at least partially masks the presence of said structure from view by a viewer who is viewing from outside the equipped vehicle through the vehicle windshield.

Section 33(a) of the AIA states "Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism."

The Commission found that a person is not a limitation of the claims, and therefore, the claims are not invalid on this basis.  The specification discloses "a substantially opaque black-out frit to mask the presence of such members when viewed from outside the vehicle through the front windshield."  The use of the word "when" illustrates that the patent does not require a person to actually be looking through the windshield from outside the automobile.

This result is straight-forward considering that the claims are directed to a system, and claims 91 and 92 recite further components/structure of the system.  The additional language in claims 91 and 92 of "by a viewer who is viewing from outside the equipped vehicle through the vehicle windshield" simply provide context to the claim for how the light absorbing layer functions.  It is clear that "a viewer" is not being claimed as a component of the system.

It may be better claim drafting, however, to have written the clause to recite "wherein a light absorbing layer disposed at the vehicle windshield at least partially masks the presence of said attachment element from view by a viewer who is viewing from outside the equipped vehicle through the vehicle windshield."  The point of the clause is to recite how the mask operates, and it is unimportant that a viewer is viewing from outside.  Of course, the mask operates in the same manner regardless of whether a viewer is present.