Case 2:22-md-03034-TGB ECF No. 268-5, PageID.29401 Filed 07/18/24 Page 1 of 7
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`Exhibit 3
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`Case 2:22-md-03034-TGB ECF No. 268-5, PageID.29402 Filed 07/18/24 Page 2 of 7
`Case 1:17-cv-00077-JMB-PJG ECF No. 661, PageID.25670 Filed 11/30/22 Page 1 of 16
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`Plaintiff,
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`MAGNA MIRRORS OF AMERICA, INC.,
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`v.
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`SAMVARDHANA MOTHERSON
`REFLECTEC GROUP HOLDINGS
`LIMITED, et al.,
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`Defendants.
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`____________________________/
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`Case No. 1:17-cv-77
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`HON. JANE M. BECKERING
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`OPINION AND ORDER
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`Plaintiff Magna Mirrors of America, Inc. (“Magna”) initiated this patent case against
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`Defendants SMR Automotive Systems USA, Inc.; SMR Automotive Mirrors UK Limited; SMR
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`Automotive Mirrors Stuttgart GmbH; and SMR Automotive Vision Systems Mexico S.A. De C.V.
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`(collectively, “SMR”). Now pending before the Court are three motions filed by SMR concerning
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`certain evidentiary disputes first discussed on the record at the Final Pretrial Conference and a motion
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`filed by Magna for reconsideration of a ruling by the Court at the Final Pretrial Conference. Having
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`considered the parties’ submissions, the Court concludes that oral argument is unnecessary to
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`resolve the issues. See W.D. Mich. LCivR 7.2(d). For the following reasons, the Court grants
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`“SMR’s Motion to Resolve the Parties’ Dispute Regarding the Admissibility of Evidence of
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`SMR’s Independent Development of the Accused Products Before Patent Issuance” (ECF No.
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`626); grants “SMR’s Motion to Redact the Last Three Sentences of PTX-89 and DX-34” (ECF
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`No. 629); denies in part and grants in part “SMR’s Motion in Opposition to Magna’s Objection to
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`that SMR “may” “potentially” use
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`the state-of-the-art references
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`in
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`its obviousness
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`combinations—an intention SMR rejects—is not a proper ground for barring SMR from discussing
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`the state of the art by using background prior art references (id. at PageID.24830–24831).
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`In response, Magna asserts that SMR has misconstrued its objection to the § 282 notice
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`(ECF No. 649 at PageID.25158). According to Magna, it does not contend that prior art references
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`can “never be used to show the state of the art”; rather, Magna contends that prior art references
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`cannot be used for what SMR is attempting here: “an end-run around the Court’s order requiring
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`SMR to narrow its prior art references for trial in exchange for narrowing the infringed claims
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`Magna could present at trial from 16 to just 5” (id.). Magna opines that SMR’s “thinly-veiled
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`attempt to broaden its prior art combinations by reclassifying prior art as ‘background’ material or
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`‘state of the art’ is improper” (id. at PageID.25163). Magna points out that of the 27 references
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`included in the updated § 282(c) Notice, only 8 were discussed in the “technical background”
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`sections of SMR’s technical expert (id. at PageID.25160).
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`SMR’s motion is denied in part and granted in part.
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`According to SMR, invalidating prior art refers to products or patents that anticipate (under
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`35 U.S.C. § 102) or render obvious (under § 103) the asserted claims (ECF No. 635 at
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`PageID.24827). SMR opines that state-of-the-art references, in contrast, are not used to prove
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`invalidity; instead, such references reflect “the knowledge that skilled artisans would bring to bear
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`in reading the prior art identified as producing obviousness” or anticipation (id., quoting Genzyme
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`Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1369 (Fed. Cir. 2016)).
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`See also Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985) (A “person
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`having ordinary skill in the art … is presumed to be aware of all the pertinent prior art.”); see, e.g.,
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`Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) ( “The invention must be
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`viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived
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`in the state of the art that existed at the time the invention was made.”).
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`However, Magna points out that courts have repeatedly cautioned that merely affixing the
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`label of “background material” does not alter the substance of what is at issue (ECF No. 649 at
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`PageID.25162, citing Pavo Sols. LLC v. Kingston Tech. Co., No. 8:14-cv-01352, 2019 WL
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`8138163, at *11 (C.D. Cal. Nov. 20, 2019) (noting that “the Court must look past [the defendant’s]
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`labeling and analyze whether that which [an expert] terms ‘background’ is really being used as
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`‘invalidating prior art’”); Largan Precision Co. v. Genius Elec. Optical Co., No. 13-cv-2502, 2014
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`WL 6882275, at *6 (N.D. Cal. Dec. 5, 2014) (striking portions of expert report that were not
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`“background” but were instead offered “as an example of a reference that teaches the benefits of
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`[a claim limitation] that would motivate modifying [the prior art] to include [that claim
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`limitation]”)).
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`Hence, in Medline Indus., Inc. v. C.R. Bard, Inc., No. 14 C 3618, 2020 WL 10485717, at
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`*5 (N.D. Ill. Jan. 8, 2020), a district court in the Northern District of Illinois rejected the
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`defendant’s request to rely on prior art references that were not disclosed in its Final Invalidity
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`Contentions to describe the state of the art. The district court reasoned that allowing the defendant
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`to do so would “circumvent the disclosure requirements of our Local Patent Rules by offering such
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`materials as background.” See also Avnet, Inc. v. Motio, Inc., No. 12 C 2100, 2016 WL 3365430,
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`at *5 (N.D. Ill. June 15, 2016) (“It would turn the local rule on its head to allow a defendant to
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`withhold prior art references from its final invalidity contentions, only to spring them on the
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`plaintiff in the defense expert report.”).
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`In the Eastern District of Texas, where no similar local rule governed the question, the
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`district court permitted the defendant and its experts to rely on unelected prior art contained in its
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`Case 1:17-cv-00077-JMB-PJG ECF No. 661, PageID.25682 Filed 11/30/22 Page 13 of 16
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`§ 282 notice, excluding patents and patent applications, for the limited purpose of providing
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`evidence regarding state of the art in its § 101 challenges, but the court did not permit the defendant
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`to rely on any unelected references as invalidating prior art. Maxell, Ltd. v. Apple Inc., No. 5:19-
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`CV-00036-RWS, 2021 WL 3021253, at *6 (E.D. Tex. Feb. 26, 2021). In a prior case, the same
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`district court observed that “using unelected references to discuss the state of the art does not
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`always violate an order that requires the parties to limit the references by which they will attempt
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`to prove invalidity, [b]ut the Court has often barred parties from using unelected references to
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`discuss the state of the art when the use of those references risks juror confusion.” Better Mouse
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`Co., LLC v. SteelSeries ApS, No. 2:14-CV-198-RSP, 2016 WL 3611560, at *1 (E.D. Tex. Jan. 5,
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`2016) (internal citation omitted).
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`Here, even assuming some nuanced distinctions exist between “prior art” and “state of the
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`art,” the distinctions do not ameliorate the prejudicial effect that admitting the unelected
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`references, in total, would have, particularly in light of this Court’s Order streamlining the claims
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`for trial. Therefore, the Court declines to grant SMR’s motion in its entirety.
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`However, the Court is inclined to permit some limited factual foundation to support SMR’s
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`claim about what one of ordinary skill in the relevant art would have known. The Federal Circuit,
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`in recognizing the role of “common knowledge and common sense,” has emphasized “the
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`importance of a factual foundation to support a party’s claim about what one of ordinary skill in
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`the relevant art would have known.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir.
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`2013. See, e.g., PSN Illinois, LLC v. Abbott Lab’ys, No. 09 C 5879, 2012 WL 5381278, at *4
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`(N.D. Ill. Oct. 31, 2012) (denying the plaintiff’s motion in limine and permitting certain prior art
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`references “unrelated to invalidity contentions” for the “limited purpose of showing the ‘state of
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`the art’ as required by 35 U.S.C. § 282(c)”).
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`Case 2:22-md-03034-TGB ECF No. 268-5, PageID.29407 Filed 07/18/24 Page 7 of 7
`Case 1:17-cv-00077-JMB-PJG ECF No. 661, PageID.25685 Filed 11/30/22 Page 16 of 16
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`for reconsideration, but after the arguments you’ve provided with me, I'm going to stand on that
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`ruling. If you can—I have no problem if you want to file a motion for reconsideration, but it’s got
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`to go beyond what we just heard because that’s my ruling” (ECF No. 621 at PageID.24560).
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`Magna has not proffered any new issue for the Court’s consideration, and the Court relies on the
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`ruling it made at the Final Pretrial Conference.
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`III.
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`CONCLUSION
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`Accordingly, for the foregoing reasons:
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`IT IS HEREBY ORDERED that SMR’s unopposed Motion to Withdraw (ECF No. 645)
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`is GRANTED, and the Motion for Leave to File Documents under Seal (ECF No. 623) is
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`WITHDRAWN.
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`IT IS FURTHER ORDERED that SMR’s Motion to Resolve the Parties’ Dispute
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`Regarding the Admissibility of Evidence of SMR’s Independent Development of the Accused
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`Products Before Patent Issuance (ECF No. 626) is GRANTED.
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`IT IS FURTHER ORDERED that SMR’s Motion to Redact the Last Three Sentences of
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`PTX-89 and DX-34 (ECF No. 629) is GRANTED.
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`IT IS FURTHER ORDERED that SMR’s Motion in Opposition to Magna’s Objection
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`to SMR’s 35 U.S.C. § 282(c) Notice (ECF No. 634) is DENIED IN PART and GRANTED IN
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`PART.
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`IT IS FURTHER ORDERED that Magna’s Motion for Reconsideration Regarding
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`Direct Infringement by OEMs (ECF No. 639) is DENIED.
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`Dated: November 30, 2022
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`/s/ Jane M. Beckering
`JANE M. BECKERING
`United States District Judge
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