`Petition for Inter Partes Review of USP 7,934,843
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Inter Partes Review of:
`U.S. Patent No. 7,934,843
`Issued: May 3, 2011
`Application No.: 12/851,045
`
`)
`)
`)
`)
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`For: Exterior Sideview Mirror System
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`FILED VIA E2E
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`DECLARATION OF DR. JOSE SASIAN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,934,843
`
`SMR USA
`Exhibit 1002
`Page 001
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`TABLE OF CONTENTS
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS ............................................... 4
`
`II.
`
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED ............ 7
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`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED
`IN THIS DECLARATION .............................................................................. 9
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`IV. BACKGROUND LAW ................................................................................. 10
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` Written Description ............................................................................. 10
`Incorporation By Reference ................................................................ 11
`
`Understanding Of Legal Principles Relevant To Anticipation
`And Obviousness ................................................................................. 11
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`
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`V.
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`SUMMARY OF OPINIONS ......................................................................... 14
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`VI. THE ’843 PATENT ....................................................................................... 15
`
`A.
`B.
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`The ’843 Patent’s Disclosure .............................................................. 15
`Application For The ʼ843 Patent ......................................................... 16
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`VII. THE ’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR CLAIM 1 OF THE ’843 PATENT .................................... 17
`
`A. A POSA Would Not Understand The ’843 Patent Family To
`Incorporate With Particularity The Two-Mirror Assembly Of
`The ’712 And ’451 Patent Family ....................................................... 23
`A POSA Would Not Understand The ’666 Application To
`Support The ’843 Patent’s Claims Even If The ’451 And ’712
`Patents Were Fully Incorporated By Reference .................................. 29
`
`B.
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`VIII. CLAIM CONSTRUCTION .......................................................................... 40
`
`A.
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`“side-by-side” ...................................................................................... 40
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`IX. THE PRIOR ART AND BACKGROUND EVIDENCE.............................. 42
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`Prior Art Relied Upon For Anticipation .............................................. 42
`Prior Art Relied Upon For Obviousness Combinations...................... 42
`1.
`U.S. Patent Application Publication No. 2004/0264011
`(“the ‘011 publication”) ............................................................ 42
`
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`SMR USA
`Exhibit 1002
`Page 002
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
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`International Pub. No. WO 2001/44013 (“Henion”) ................ 44
`2.
`International Pub. No. WO 2001/81956 (“Platzer”) ................. 45
`3.
`U.S. Pat. No. 5,721,646 (“Catlin”) ........................................... 46
`4.
`U.S. Pat. No. 5,793,542 (“Kondo”) .......................................... 46
`5.
`Background Evidence ......................................................................... 47
`
`X.
`
`CLAIMS 1-23 AND 27-39 OF THE ’843 PATENT ARE
`ANTICIPATED BY THE ’026 PUBLICATION ......................................... 48
`
`Claim 1 ................................................................................................ 49
`Preamble, [a], [b] Exterior sideview mirror assembly .............. 49
`[d] Plano-auxiliary assembly .................................................... 50
`[q] Reflective Element Substrates ............................................. 52
`[e], [i] Mounted adjacently and outboard ................................. 52
`[c] Electrically-operated actuator .............................................. 55
`[f] Backing plate mounted to actuator ...................................... 56
`[h], [k], [l], [m] Support portions and capable of
`supporting .................................................................................. 58
`[j] Polymeric substrate .............................................................. 60
`[g], [p] Planar and auxiliary mirror fields of view, blind
`spot ............................................................................................ 61
`[n] Different, angled rearward field of view ............................. 62
`[o] Angled second support portion ........................................... 64
`Claim 2 – Generally Coplanar ............................................................. 65
`Claims 3 and 13 – Backing Plate Partition/Wall ................................. 66
`Claims 4, 5, 6, 7, 8, 9, 10, 11, and 12 .................................................. 68
`Claim 16 .............................................................................................. 74
`Claims 17, 18, 19, 30, and 31 .............................................................. 75
`Claims 35 and 20-23............................................................................ 77
`Claim 27 .............................................................................................. 81
`Claims 14, 15, 28, 29, and 34 .............................................................. 82
`Claims 32 and 33 ................................................................................. 86
`Claims 36-39 ....................................................................................... 86
`
`XI. CLAIMS 1 AND 24-26 WOULD HAVE BEEN OBVIOUS OVER
`THE COMBINATION OF THE ’026 AND ’011 PUBLICATIONS ........... 88
`
`Claim 1 ................................................................................................ 88
`Claims 24 and 25 ................................................................................. 89
`Claim 26 .............................................................................................. 94
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`SMR USA
`Exhibit 1002
`Page 003
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` Motivation to Combine ....................................................................... 96
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`XII. CLAIMS 1, 15, AND 34 WOULD HAVE BEEN OBVIOUS OVER
`THE COMBINATION OF HENION, CATLIN, AND PLATZER ............. 99
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`
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`Claim 1 ................................................................................................ 99
`Preamble, [a], [b] Exterior sideview mirror assembly .............. 99
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`[d] Plano-auxiliary assembly .................................................. 101
`[q] Reflective Element Substrates ........................................... 102
`[e] Mounted Adjacently, Side-By-Side, And Not
`Superimposed .......................................................................... 105
`[i] Auxiliary Mirror Outboard ................................................. 108
`[c] Electrically-operated actuator ............................................ 115
`[f] Backing plate mounted to actuator .................................... 117
`[h], [k], [l], [m] Support portions and capable of
`supporting ................................................................................ 120
`[j] Polymeric substrate ............................................................ 122
`[g], [p] Planar and auxiliary mirror fields of view, blind
`spot .......................................................................................... 126
`[n] Different, angled rearward field of view ........................... 128
`[o] Angled second support portion ......................................... 130
`
`Claim 15 ............................................................................................ 131
`Claim 34 ............................................................................................ 134
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`
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`B.
`C.
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`XIII. CLAIM 33 WOULD HAVE BEEN OBVIOUS OVER HENION,
`PLATZER, CATLIN, AND KONDO ......................................................... 146
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`XIV. CONCLUSION ............................................................................................ 149
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`SMR USA
`Exhibit 1002
`Page 004
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`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`
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`I have been retained by SMR Automotive Systems USA Inc. (“SMR”)
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`to provide my opinion concerning the validity of U.S. Patent No. 7,934,843 (attached
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`to the accompanying Petition and henceforth referred to as “the ‘843 patent”) in
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`support of SMR’s Petition for Inter Partes Review of U.S. Patent No. 7,934,843.
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`
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`I have extensive academic and industry experience with optical
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`engineering. Specifically, I have over thirty years of academic and industry
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`experience in the field of optical sciences and optical engineering in general,
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`including optical instrumentation, optical design, and optical fabrication and
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`testing.
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`
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`I am currently a full-time, tenured Professor of Optical Sciences at the
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`College of Optical Sciences at the University of Arizona in Tucson, Arizona, a
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`position I have held since 2002. As a professor, I teach and perform research in the
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`field of optical design. For example, I teach my students how to design lenses and
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`mirrors and how to think about light so that they can design useful optical systems.
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`
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`As part of my academic and research responsibilities I am frequently
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`involved with the design, fabrication, and testing of optical devices. Prior to
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`receiving tenure, I was an Associate Professor of Optical Sciences at the University
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`of Arizona from 1995 to 2001. Prior to joining the University of Arizona faculty, I
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`was a member of the technical staff of AT&T Bell Laboratories from 1990 to 1995.
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`4
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`SMR USA
`Exhibit 1002
`Page 005
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`From 1984 to 1987, I was a Research Assistant, and from 1988 to 1990, I was a
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`Research Associate, in the Optical Sciences Center at the University of Arizona.
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`From 1976 to 1984, I was an optician at the Institute of Astronomy at the University
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`of Mexico.
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`
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`I received a Bachelor of Science degree in Physics from the University
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`of Mexico in 1982, a Master of Science degree in Optical Sciences from the
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`University of Arizona in 1987, and a Ph.D. degree in Optical Sciences from the
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`University of Arizona in 1988. My research areas include optical design, fabrication,
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`and testing of optical instruments, astronomical optics, diffractive optics, opto-
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`mechanical design, light in gemstones, lithography optics, and light propagation.
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`
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`At the University of Arizona, I have taught the courses Lens Design
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`OPTI 517 (1997-present), Introduction to Aberrations OPTI 518 (2005-present),
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`Advanced Lens Design OPTI 595A (2008, 2012, 2017), Illumination Optics
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`Seminar (1997-2000), Introduction to Opto-mechanics OPTI 690 (1998, 2001, 2003,
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`2004, 2005) and Optical Shop Practices OPTI 597A (1996-present). I teach students
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`how to design mirrors, including their field of view specifications, how to grind,
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`polish, and test aspheric mirrors, how to mount mirrors properly so that their
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`physical integrity is preserved under a variety of loads, and how to align mirrors. I
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`have experience in flat, curved, and aspheric mirror fabrication and mounting, and
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`in the chemical and vacuum deposition of reflective metals on substrates.
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`5
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`SMR USA
`Exhibit 1002
`Page 006
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`I have directed several theses and dissertations in the areas of lens and
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`mirror design. I have lectured regarding my work, and have published, along with
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`students and colleagues, over one hundred scientific papers in the area of optics.
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`These include technical papers, patents, and thesis research done under my direction,
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`related to lens and mirror design. For example, “Two-mirror telescope design with
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`third-order coma insensitive to decenter misalignment,” “Double-curvature Surfaces
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`in Mirror System Design,” "Four-mirror optical system for large telescopes," and
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`"Flat-field, anastigmatic, four-mirror optical system for large telescopes."
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`
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`As part of my research responsibilities at the University of Arizona, I
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`am often involved in projects that have included automotive optics, and mirrors and
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`prism in periscopic systems.
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`
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`Since 1995, I have been a consultant and have provided to industry
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`solutions to a variety of projects that include flat and curved mirrors and opto-
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`mechanics design. I also have consulted in the area of plastic optics. I hold several
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`patents and patent applications related to optical mirrors.
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`
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`I have been a topical editor and reviewer for the peer-reviewed journal
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`Applied Optics. I am a fellow of the International Society for Optics and Photonics
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`(SPIE), a fellow of the Optical Society of America (OSA), and a lifetime member of
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`the Optical Society of India.
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`6
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`SMR USA
`Exhibit 1002
`Page 007
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`I have served as a co-chair for the conferences "Novel Optical Systems:
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`Design and Optimization" (1997-2006), "Optical systems alignment, tolerancing,
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`and verification" (2007-2017), and “International Optical Design Conference,”
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`(2002). I have taught in Japan (2015, 2016, and 2017) the course: Advanced Lens
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`Design: Art and Science.
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`
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`I have been an editor of approximately 17 published conference
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`proceedings from SPIE. I am the author of the book, "Introduction to Aberrations in
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`Optical Imaging Systems," by Cambridge University Press, 2013. I am named as an
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`inventor on approximately 12 U.S. patents.
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` My curriculum vitae, which includes a more detailed summary of my
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`background, experience, and publications, is attached to the accompanying Petition.
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`II.
`
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED
`
` The opinions contained in this Declaration are based on the documents
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`I reviewed and my knowledge and professional judgment. In forming the opinions
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`expressed in this Declaration, I reviewed the following documents:
`
`Ex. No.
`
`Description
`
`1001
`
`1003
`
`1007
`
`U.S. Patent No. 7,934,843 (“the ‘843 patent”)
`
`Curriculum Vitae of Jose Sasian
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`U.S. Patent Application No. 12/851,045 (“the ‘045 publication”)
`
`7
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`SMR USA
`Exhibit 1002
`Page 008
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`1010
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`1011
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`1012
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`1013
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`1014
`
`1015
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`1016
`
`1017
`
`1018
`
`1020
`
`1032
`
`1033
`
`1034
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`1035
`
`1036
`
`1039
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`Second Amended Complaint, Magna Mirrors of America, Inc. v.
`Samvardhana Motherson Reflectec Group Holdings Ltd., et al., No.
`1:17-CV-77 (W.D. Mich., Aug. 17, 2017) “2d Am. Comp.”)
`
`U.S. Patent Application Publication No. 2002/0072026 (“the ’026
`publication”)
`
`WO 2001/44013 (“Henion”)
`
`WO 2001/81956 (“Platzer”)
`
`U.S. Patent Application No. 12/197,666 (“the 666 application”)
`
`U.S. Patent No. 7,842,154 (“the ‘154 patent”)
`
`U.S. Patent No. 6,522,451 (“the ‘451 patent”)
`
`U.S. Patent No. 6,717,712 (“the ‘712 patent”)
`
`U.S. Patent No. 7,167,294 (“the ‘294 patent”)
`
`Computer-generated document comparison showing differences in
`the ‘045 and ‘666 applications
`
`Excerpts from James Maxwell, Plastics in the Automotive Industry
`114 (Woodhead Publishing Limited 1994) (“Maxwell”)
`
`Excerpts from N. G. McCrum, C. P. Buckley, & C. B. Bucknall,
`Principles of Polymer Engineering (Oxford Science Publications 2d
`ed. 2011) (1997) (“Bucknall”)
`
`U.S. Patent No. 5,721,646 (“Catlin”)
`
`U.S. Patent No. 5,793,542 (“Kondo”)
`
`U.S. Patent Application Publication No. 2004/0264011 (“the ‘011
`app. publication”)
`
`George Platzer, The Geometry of Automotive Rearview Mirrors -
`Why Blind Zones Exist and Strategies to Overcome Them, SAE
`Technical Paper 950601 (1995)
`
`8
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`SMR USA
`Exhibit 1002
`Page 009
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
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`NATIONAL HIGHWAY TRAFFIC SAFETY ADMINISTRATION, U.S. DEP’T
`OF TRANSPORTATION, DOC. NO. TP111V-00, LABORATORY TEST
`PROCEDURE FOR FMVSS 111 – REARVIEW MIRRORS (OTHER THAN
`SCHOOL BUSES) (October 28, 1999)
`
`1040
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` My opinions are additionally guided by my appreciation of how a
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`person of ordinary skill in the art would have understood the claims of the ’843
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`patent at the relevant time. As discussed herein, in my opinion, a person of ordinary
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`skill in the art would not have understood the claims of the ’843 patent to be
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`described in the ’666 application. Nevertheless, because I understand that the ’843
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`patent attempts to claim priority to the application for U.S. Patent No. 6,717,712,
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`filed in 2003, I was also asked to consider a date of 2003 for the purpose of
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`determining how a person or ordinary skill would have understood the claims. The
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`choice of 2003 v. a later date did not affect my analysis of the meaning of the claim
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`terms.
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`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED IN
`THIS DECLARATION
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` To analyze the level of skill in the art, I have considered the type of
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`problems encountered in the art, prior art solutions, rapidity of innovation,
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`sophistication of technology, and educational level of active workers in the field.
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` The ‘843 Patent field of invention relates to side-view mirror
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`assemblies for vehicles that include a main mirror and an auxiliary mirror. The
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`problem addressed in the ’843 patent requires knowledge of geometrical optics,
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`9
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`SMR USA
`Exhibit 1002
`Page 010
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`
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`optical elements including flat and curved mirrors, optical specifications, alignment
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
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`of optics, fabrication of optics, mechanical design, and visual optics.
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` The relevant field, therefore, is comprised of people having an
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`engineering degree or its equivalent. In particular, a person having ordinary skill in
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`this art (“POSA”) will have had at the time of invention a M.Sc. degree in Optics,
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`Optical Engineering, or similar studies in a related field (e.g., Physics or Mechanical
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`Engineering) with 2-3 years of experience in the optics/mechanical industry. This
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`description is approximate, and a higher level of education or skill may make up for
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`less experience, and vice-versa, e.g., a B.S. in the above fields with 4-6 years of
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`experience in the industry.
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`IV. BACKGROUND LAW
`
` Written Description
`
`
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`I understand that a patent claim has sufficient written description
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`support in a patent application when that application (including its as-filed claims)
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`describes the claimed invention, with all of its limitations, in a manner that is
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`understandable to one of ordinary skill in the art and therefore shows that the
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`inventor actually invented the invention claimed. I also understand that describing
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`an obvious variant of the claimed invention is not sufficient. The person of ordinary
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`skill must conclude that the application itself (including its as-filed claims) fully sets
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`10
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`SMR USA
`Exhibit 1002
`Page 011
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`
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`forth the claimed invention, by describing it in words, figures, diagrams, and the
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
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`like.
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`
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`Incorporation By Reference
`
` With respect to incorporation by reference in the context of patents and
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`patent applications, I understand that in order for a first document to validly
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`incorporate material by reference from a second document, the first document must
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`state with detailed particularity what material is incorporated and identify where in
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`the second document that material may be found. I further understand that the Board
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`evaluates the particularity required for sufficient incorporation by reference from the
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`point of view of a POSA: material is validly incorporated if a POSA would
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`understand a document to sufficiently incorporate subject matter by reference.
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` Understanding Of Legal Principles Relevant To Anticipation And
`Obviousness
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`
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`I understand that a prior art reference can anticipate a patent claim when
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`the prior art’s disclosure renders the claim’s disclosure not novel. I understand that
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`in order to anticipate a patent claim, a prior art reference must teach every element
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`of the claim, expressly or inherently. In analyzing anticipation, I understand that it
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`is important to consider the scope of the claims, the level of skill in the relevant art,
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`the scope and content of the prior art, and the differences between the prior art and
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`the claims.
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`11
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`SMR USA
`Exhibit 1002
`Page 012
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`I understand that a prior art reference can render a patent claim obvious
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`to one of ordinary skill in the art if the differences between the subject matter set
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`forth in the patent claim and the prior art are such that the subject matter of the claim
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`would have been obvious at the time the claimed invention was made. In analyzing
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`obviousness, I understand that it is important to consider the scope of the claims, the
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`level of skill in the relevant art, the scope and content of the prior art, the differences
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`between the prior art and the claims, and any secondary considerations.
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`I understand that when the claimed subject matter involves combining
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`pre-existing elements to yield no more than one would expect from such an
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`arrangement, the combination would have been obvious. I also understand that in
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`assessing whether a claim would have been obvious one must consider whether the
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`claimed improvement is more than the predictable use of prior art elements
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`according to their established functions. I understand that there need not be a precise
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`teaching in the prior art directed to the specific subject matter of a claim because one
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`can take account of the inferences and creative steps that a person of skill in the art
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`would employ. I further understand that a person of ordinary skill is a person of
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`ordinary creativity, not an automaton.
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`I understand that obviousness cannot be based on the hindsight
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`combination of components selectively culled from the prior art. I understand that
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`in an obviousness analysis, neither the motivation nor the avowed purpose of the
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`12
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`SMR USA
`Exhibit 1002
`Page 013
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`
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`inventors controls the inquiry. Any need or problem known in the field at the time
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`of the invention and addressed by the patent can provide a reason for combining
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`elements. For example, I understand that it is important to consider whether there
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`existed at the time of the invention a known problem for which there was an obvious
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`solution encompassed by the patent’s claims. I understand that known techniques
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`can have obvious uses beyond their primary purposes, and that in many cases a
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`person of ordinary skill can fit the teachings of multiple pieces of prior art together
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`like pieces of a puzzle.
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`
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`I understand that, when there is a reason to solve a problem and there
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`are a finite number of identified, predictable solutions, a person of ordinary skill has
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`good reason to pursue the known options within his or her technical grasp. I further
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`understand that, if this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense, which bears on whether the
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`claim would have been obvious.
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`I understand that secondary considerations can include, for example,
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`evidence of commercial success of the invention, evidence of a long-felt need that
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`was solved by an invention, evidence that others copied an invention, or evidence
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`that an invention achieved a surprising result. I further understand that such
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`evidence must have a nexus, or causal relationship to the elements of a claim, in
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`13
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`SMR USA
`Exhibit 1002
`Page 014
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`order to be relevant. I am unaware of any such secondary considerations for the ’843
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`patent.
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`V.
`
`SUMMARY OF OPINIONS
`
` As I describe in further detail below, my opinion is that the claims of
`
`the ’843 patent, all of which are directed to an automotive exterior rear sideview
`
`mirror assembly containing a flat primary mirror and a curved auxiliary mirror, lack
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`written description support in the application to which the ’843 patent claims priority
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`– the ’666 application. The ’666 application is directed at a single mirror assembly
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`rather than a two mirror assembly, but contains a brief statement of incorporation by
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`reference relating to the ’712 patent, which discloses a two mirror assembly. As I
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`describe herein, a POSA would not have understood this brief statement to constitute
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`incorporation by reference of the ’712 patent’s two-mirror assembly. Further, even
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`if the ’712 patent’s two mirror assembly were fully incorporated by reference into
`
`the ’666 application, a POSA would still not understand the ’666 application to
`
`provide sufficient written description support for a two-mirror assembly.
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`
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`It is also my opinion that certain claims of the ’843 patent are
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`anticipated or rendered obvious by the prior art references disclosed herein.
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`Specifically, it is my opinion that claims 1-23 and 27-39 are anticipated by the ’026
`
`publication; claims 1 and 24-26 are rendered obvious by the ’026 publication in
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`combination with the ’011 publication; claims 1, 15, and 34 are rendered obvious by
`
`14
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`SMR USA
`Exhibit 1002
`Page 015
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`
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`the combination of Henion, Catlin, and Platzer; and claim 33 is rendered obvious
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`over Henion, Catlin, Platzer, and Kondo.
`
`VI. THE ’843 PATENT
`
`
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`I have reviewed the ’843 patent. The ’843 patent is entitled to an
`
`effective filing date of August 5, 2010 or later because the claims of the ’843 patent
`
`do not have written description support in the previous patent applications in the
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`’843 patent’s family, as illustrated below.
`
`A. The ’843 Patent’s Disclosure
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` The ’843 patent discloses a driver’s-side exterior sideview mirror
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`system for automobiles. See, e.g., ’843 patent at 1:62-3:34 & Fig. 16. The system
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`is comprised of an assembly containing two separate mirrors – a flat (plano-
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`reflective) primary mirror for viewing areas rearward and sideward of the driver, and
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`an auxiliary curved or secondary mirror providing a wide-angled field of view
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`(“FOV”) capable of viewing into the area not covered by the primary mirror (the
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`driver’s “blind spot”). ’843 patent at 1:62-3:34 & Figs. 11, 13-16. The primary and
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`secondary mirrors may be at an angle relative to each other to provide the driver a
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`wider total field of view. Id. at 1:62-3:34 & Figs. 11, 14. This angling may be
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`accomplished by placing the primary and secondary mirrors on separate, angled
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`portions of a molded plastic backing plate. Id. at 1:62-3:34 & Figs. 3, 6.
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`15
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`SMR USA
`Exhibit 1002
`Page 016
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`B. Application For The ʼ843 Patent
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
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`I have considered the application for the ’843 patent, which I
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`understand to be important to understanding the ’843 patent’s priority date.
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`I understand that Magna filed the application for the ’843 patent (Appl.
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`No. 12/851/045, the “’045 application”) on August 5, 2010. ’843 FH 1145. The
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`application noted that it was a continuation of the application for the ’154 patent (the
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`’666 application). ’843 FH 1145.
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`I am informed that the specification of the ’712 patent was copied into
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`the ’045 application.
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`I have reviewed a computer-generated comparison of the ’045 and ’666
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`applications showing that the majority of the ’712 patent’s specification was copied
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`into the ’045 application that is attached as an exhibit to the petition and listed the
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`table of materials reviewed.
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` This incorporation of the ’712 included the ’712 patent’s disclosure of
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`an exterior automotive rearview mirror assembly comprised of two separate mirrors,
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`one flat and one curved, whose combined FOVs provided a greater FOV to the driver
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`of the automobile. ’712 patent at 3:2-5:6, Figs. 3, 5, 6, and 15.
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` This incorporated disclosure described an exterior sideview mirror
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`system comprising two separate mirrors – the primary and auxiliary mirrors claimed
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`by the ’843 patent.
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`16
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`SMR USA
`Exhibit 1002
`Page 017
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
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`VII. THE
`’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR CLAIM 1 OF THE ’843 PATENT
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`I understand that the ’843 patent claims priority through the ’154 patent.
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`I understand that therefore, the application leading to the ’154 patent (App. No.
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`12/197,666 (the “’666 application”)) must provide written description support for
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`the claims of the ’843 patent. Thus, throughout this discussion, I will also refer to
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`the disclosures of the ’666 application, in addition to the patents where appropriate.
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` Reading the ’666 application, one of ordinary skill in the art would
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`plainly recognize that the invention disclosed is drawn to mirror assemblies that use
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`a single reflective element. There are many cues recognizable to one of ordinary
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`skill in the art that leads to this conclusion. Specifically, the title of the application
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`refers to a single “reflective element.” Additionally, one of ordinary skill in the art
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`reading the ’666 application would expect and recognize that the Summary of the
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`Invention section of the ’666 application (¶¶ 6-17) describes general aspects of the
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`invention as a whole, while Description of the Preferred Embodiments section (¶¶
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`27-48) describes specific aspects of embodiments of the invention.
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` The first sentence of the Summary of the Invention states: “The present
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`invention provides a molded wide angle or multi-radius substrate for a reflective
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`element.” ’666 application at ¶ 6. Consistent with the title of the application, the
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`first sentence of the Summary of the Invention refers to a single substrate. The
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`17
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`SMR USA
`Exhibit 1002
`Page 018
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`second sentence of the Summary of the Invention further makes the point, describing
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
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`that the single “molded substrate” “comprises a polymeric optical resin transparent
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`material and has a curved exterior surface, which may have a less curved/flatter or
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`substantially flat inboard portion or surface and a more curved outboard portion or
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`surface.” Id. Thus, the single molded substrate of the invention has two portions:
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`one that is flatter, and one that is more curved at the outboard portion of the single
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`substrate. See also id. at ¶ 10. These descriptions are regarding the “present
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`invention.” Id. at ¶ 6. By contrast, other paragraphs within the Summary of the
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`Invention refer to only to an “aspect” or “application” of the present invention. See
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`id. at ¶¶ 7-8, 12-13. But at the end of the Summary of the Invention, the applicant
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`against notes that “the present invention provides a molded wide angle or multi-
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`radius single substrate for a rearview mirror assembly . . . .” Id. at ¶ 16 (emphasis
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`added). Thus, one of ordinary skill in the art reading the ’666 application would
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`recognize that the applicant’s invention was about mirror assemblies using a single
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`reflective element.
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` The embodiments of the ’666 application are also consistent with this
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`conclusion. For example, Figure 1, described as “a perspective view of an exterior
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`rear view mirror assembly in accordance with the present invention,” shows that
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`reflective element 12 is of a single piece. ’666 application at ¶ 18 (emphasis added);
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`Fig. 1. Figure 1 of the ’666 application is reproduced below.
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`18
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`SMR USA
`Exhibit 1002
`Page 019
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`Declaration of Dr. Jos