UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Motherson Innovations Co., Ltd.,
`Petitioner,
`
`v.
`
`Magna Mirrors of America, Inc.,
`Patent Owner.
`
`Case IPR2020-00777
`Patent No. 10,261,648
`
`Patent Owner’s Response
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`TABLE OF CONTENTS
`
`B.
`
`C.
`
`Page
`TABLE OF AUTHORITIES .................................................................................... iv
`LIST OF EXHIBITS ................................................................................................. vi
`I.
`Introduction ...................................................................................................... 1
`II.
`A Person Having Ordinary Skill In The Art .................................................... 1
`III. Claim Construction .......................................................................................... 1
`A.
`“Exterior Mirror Reflective Element Fixedly Attached At Said
`Mirror Head” ......................................................................................... 1
`“A Bracket To Which Said Exterior Mirror Reflective Element
`Is Fixedly Attached” ............................................................................ 11
`“Wherein The Outermost Front Perimeter Edge Of Said
`Exterior Mirror Reflective Element Is Rounded” ............................... 19
`“Rearward Field of View” ................................................................... 24
`D.
`“Yaw” And “Roll”............................................................................... 29
`E.
`The Petition Fails To Establish A Reasonable Likelihood That
`Petitioner Will Prevail ................................................................................... 37
`A.
`Ground 1: Lupo, Alone or In Combination With Other
`References, Does Not Disclose All Of The Elements Of The
`Challenged Claims .............................................................................. 37
`1.
`Lupo Does Not Disclose “An Exterior Mirror Reflective
`Element Fixedly Attached At Said Mirror Head” (Claim
`1, 15, 26) ................................................................................... 37
`Lupo Does Not Disclose “A Bracket To Which Said
`Exterior Mirror Reflective Element Is Fixedly Attached”
`(Claims 3–4, 6–7, 17–18, 21–22, 29–30, 32) ........................... 38
`
`IV.
`
`2.
`
`i
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`

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`IPR2020-00777
`
`Patent No. 10,261,648
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`3.
`
`4.
`
`B.
`
`C.
`
`Lupo Does Not Disclose “Wherein Said Multi-Axis
`Adjustment Mechanism Is Operable For … Roll
`Adjustment” (Claims 9, 25, 31, and 36) ................................... 42
`Lupo Does Not Disclose The First And Second Actuators
`Are “Cooperatively Operable To Adjust Said Mirror
`Head” (Claims 12, 27) .............................................................. 45
`Ground 1(b): The Combination Of Lupo and McCabe Does Not
`Render The Challenged Claims Obvious ............................................ 46
`1.
`Lupo In Combination With McCabe Does Not Disclose
`“Wherein The Outermost Front Perimeter Edge Of Said
`Exterior Mirror Reflective Element Is Rounded” (Claims
`2, 16, 33) ................................................................................... 47
`There Is No Motivation To Combine McCabe With Lupo ...... 52
`2.
`Ground 2(a): Tsuyama Does Not Render The Challenged
`Claims Obvious ................................................................................... 54
`1.
`Tsuyama Fails To Disclose Or Render Obvious An
`“Exterior Rearview Mirror Assembly” As Required By
`Every Claim .............................................................................. 54
`Tsuyama Does Not Disclose “An Exterior Mirror
`Reflective Element Fixedly Attached At Said Mirror
`Head” (Claims 1, 15, 26) .......................................................... 59
`Tsuyama Does Not Disclose “Wherein Said Multi-Axis
`Adjustment Mechanism Is Operable For … Yaw
`Adjustment” (Claims 9, 25, 31, and 36) ................................... 61
`Tsuyama Does Not Disclose Both An “Attachment
`Portion” And A “Support Structure” That Moves
`Relative To The Vehicle (Claims 5, 20, 26) ............................. 63
`Tsuyama Does Not Disclose Wherein Said First And
`Second Electrically-Operable Actuators Are
`“Cooperatively Operable” To Adjust Said Mirror Head
`(Claims 12, 24, 27) .................................................................... 66
`
`2.
`
`3.
`
`4.
`
`5.
`
`ii
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`IPR2020-00777
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`Patent No. 10,261,648
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`D.
`
`Ground 2(b): The Combination of Tsuyama and McCabe Does
`Not Render the Challenged Claims Obvious ...................................... 67
`1.
`Tsuyama In Combination With McCabe Does Not
`Disclose “Wherein The Outermost Front Perimeter Edge
`Of Said Exterior Mirror Reflective Element Is Rounded”
`(Claims 2, 16, 33) ...................................................................... 67
`Because Tsuyama Is Not A Rear-View Mirror Used For
`Driving, There Is No Reason To Modify It In View Of
`McCabe ..................................................................................... 69
`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24 ............................. 72
`CERTIFICATE OF SERVICE ................................................................................ 73
`
`2.
`
`NOTES
`
`1.
`
`All emphasis in this brief added, unless otherwise indicated.
`
`All references to “Petition” herein refer to Paper No. 1, Petition for
`2.
`Inter Partes Review of U.S. Patent No. 10,261,648, filed by Petitioner on March
`31, 2020.
`
`All references to “Institution Decision” herein refer to Paper No. 7,
`3.
`Decision Granting Institution of Inter Partes Review, filed by the Patent Trial and
`Appeal Board on October 7, 2020.
`
`iii
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`

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`IPR2020-00777
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`Patent No. 10,261,648
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`CASES
`AK Steel Corp. v. Sollac & Ugine,
`344 F.3d 1234 (Fed. Cir. 2003) .......................................................................... 20
`Continental Can Co. USA v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) .......................................................................... 46
`Continental Circuits LLC v. Intel Corp.,
`915 F.3d 788 (Fed. Cir. 2019) ............................................................................ 12
`Corning Glass Works v. Sumitomo Electric USA, Inc.,
`868 F.2d 1251 (Fed. Cir. 1989) ............................................................................ 9
`Halliburton Energy Servs., Inc. v. M-I LLC,
`514 F.3d 1244 (Fed. Cir. 2008) .......................................................................... 24
`Media Technologies Licensing, LLC v. The Upper Deck Company,
`No. SA CV 01-1198 AHS, 2008 WL 6023808 (C.D. Cal. 2008) ........................ 7
`Modine Mfg. Co. v. U.S. Int'l Trade Comm’n,
`75 F.3d 1545 (Fed. Cir. 1996) ............................................................................ 10
`Nellcor Puritan Bennet, Inc. v. Portex, Inc.,
`No. C 04-1934 VRW, 2005 WL 6218588 (N.D. Cal. 2005) ........................ 13, 18
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................... 1, 10, 12, 13, 21
`QDS Injection Molding, L.L.C. v. United Maxon, Inc.,
`No. SACV 09-1412 DOC RNB, 2011 WL 1706512 (C.D. Cal.
`2011) ............................................................................................................. 13, 15
`Ruckus Wireless, Inc. v. Innovative Wireless Solutions,
`824 F.3d 999 (Fed. Cir. 2016) ........................................................................ 9, 10
`Schriber-Schroth Co. v. Cleveland Trust Co., Chrysler Corp.,
`305 U.S. 47 (1938) ................................................................................................ 9
`
`iv
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`Patent No. 10,261,648
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`Schultz v. iGPS Co. LLC,
`No. 10 C 0071, 2013 WL 212927 (N.D. Ill. 2013) .............................................. 7
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) ............................................................................ 9
`Searfoss v. Pioneer Consolidated Corp.,
`374 F.3d 1142 (Fed. Cir. 2004) .......................................................................... 13
`Smith v. Snow,
`294 U.S. 1 (1935) .................................................................................................. 9
`Southco, Inc. v. Fivetech Technology, Inc.,
`611 Fed. Appx. 681, 2015 WL 1609846 (Fed. Cir. 2015) ........................... 12, 13
`Summer Infant (USA), Inc. v. Tomy International, Inc.,
`No. 1:17-cv-00549-MSM-PAS, 2020 WL 1531403 (D.R.I. Mar.
`31, 2020) ............................................................................................................... 7
`Summer Infant (USA), Inc. v. Tomy International, Inc.,
`No. 17-549JJM, 2019 WL 4596780 (D.R.I. 2019)............................................... 7
`SuperGuide Corp. v. DirectTV Enters., Inc.,
`358 F.3d 870 (Fed. Cir. 2004) .............................................................................. 8
`Verizon Services Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ............................................................................ 9
`Weekend Warriors Trailers v. Thor California Inc.,
`No. CV-03-2223, 2005 WL 6225203 (C.D. Cal. 2005) ....................................... 7
`MISCELLANEOUS
`49 C.F.R. § 571.111 ................................................................................................. 22
`
`v
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`

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`IPR2020-00777
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`Patent No. 10,261,648
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`LIST OF EXHIBITS
`
`Exhibit
`2001
`
`Description
`Declaration of Michael Nranian
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`Curriculum Vitae of Michael Nranian
`
`Laboratory Test Procedure for FMVSS 111
`
`ECE 324 Regulation 46
`
`SAE Sign Convention for Vehicle Crash Testing
`
`Low-Order Modeling of Vehicle Roll Dynamics
`
`Vehicle Dynamics-Vehicle’s Coordinate System [SAE]
`
`Laboratory Test Procedure for Dynamic Rollover – The Fishhook
`Maneuver Test Procedure
`
`What is a Seamed Edge and Why is it Important
`
`First Supplemental Declaration of Michael Nranian
`
`WO 2011/044312A1
`
`WO 2010/124064A1
`
`U.S. Design Patent No. D633,423
`
`U.S. Design Patent No. D633,019
`
`49 C.F.R. § 571.111: FMVSS 111
`
`vi
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`

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`IPR2020-00777
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`Patent No. 10,261,648
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`I.
`
`Introduction
`U.S. Patent 10,261,648 (“’648”) is directed to an “Exterior Rearview Mirror
`
`Assembly.” Ex. 1001, Title; see Ex. 2001, ¶¶ 58–74. For the reasons below, the
`
`Board should find the challenged claims patentable.
`
`II.
`
`A Person Having Ordinary Skill In The Art
`A person having ordinary skill in the art (a “POSA”) would hold a Master of
`
`Science degree in any kind of engineering relevant to automotive component
`
`design
`
`(e.g., electrical engineering, mechanical engineering, or optical
`
`engineering), as well as 2–3 years of experience in the automotive industry
`
`designing components for automobiles. Ex. 2001, ¶¶ 35–41; see also Ex. 2002.
`
`III. Claim Construction
`A.
`“Exterior Mirror Reflective Element Fixedly Attached At Said
`Mirror Head”
`Petitioner’s Construction
`None
`
`Patent Owner’s Construction
`Exterior mirror reflective element
`fixedly attached to a peripheral exterior
`surface portion of said mirror head
`
`Claims 1, 15, and 26 recite a “mirror reflective element” that is “fixedly
`
`attached at said mirror head.” Petitioner offers no construction. The term means
`
`to a POSA that the mirror reflective element is “fixedly attached to a peripheral
`
`exterior surface portion of said mirror head.” See Ex. 2001, ¶¶ 42–45, 75–88.
`
`This is supported by the specification, and “most naturally aligns with the
`
`patent’s description of the invention.” Phillips v. AWH Corp., 415 F.3d 1303,
`
`1
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`Patent No. 10,261,648
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`1315–16 (Fed. Cir. 2005) (en banc). For example, Figure 58A shows an exterior
`
`mirror having a “mirror reflective element” 612 (green) fixedly attached at the
`
`“mirror head” 614 (blue):
`
`Mirror reflective
`element (612)
`
`Mirror
`head (614)
`
`Ex. 1001, Fig. 58A (annotated and colored). The mirror reflective element is an
`
`element separate from the mirror head, and is attached to a particular peripheral
`
`exterior surface portion of the mirror head, rather than recessed inward within the
`
`mirror head. Ex. 2001, ¶¶ 78–85.
`
`The same applies to all the exterior mirror embodiments in the specification.
`
`Ex. 2001, ¶ 80. Figures 56 and 56A likewise show the mirror reflective element
`
`612 as a separate element attached to the peripheral exterior surface portion of the
`
`mirror head 614.
`
`2
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`

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`Patent No. 10,261,648
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`Ex. 1001, Fig. 56 (colored); Ex. 2001, ¶ 78. Figure 68A does also:
`
`FIG. 68A
`
`Ex. 1001, Fig. 68A (colored); Ex. 2001, ¶ 84.
`
`Attachment “at the mirror head” is described in the first line of the abstract:
`
`“an exterior mirror reflective element fixedly attached at the mirror head.” Ex.
`
`1001, Abstract; Ex. 2001, ¶ 86. This provides “a smooth or continuous transition
`
`3
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`

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`Patent No. 10,261,648
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`between the generally planar front surface of the reflective element and the side
`
`walls or surfaces of the mirror housing.” Id., 58:56–59:6; Ex. 2001, ¶ 82.
`
`Moreover, ’648 distinguishes “known exterior mirror constructions” based
`
`on the attachment of the mirror reflective element at the mirror head. Ex. 1001,
`
`70:4–32; Ex. 2001, ¶ 83. The “known exterior mirror construction,” as shown in
`
`Figure 68B (below), is characterized by its “mirror reflective element 762 [which]
`
`is disposed in or housed in a mirror casing 764” and is “inboard of the open end of
`
`the mirror casing and not attached thereto.” Ex. 1001, 70:4–11; Ex. 2001, ¶ 83. A
`
`problem with that arrangement is that it limits the “space within the mirror casing.”
`
`Ex. 1001, 70:23–27; Ex. 2001, ¶ 83.
`
`’648 overcomes this by fixing the mirror reflective element at the mirror
`
`housing so that it is not “disposed in or housed in” the mirror casing. Ex. 1001,
`
`4
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`Patent No. 10,261,648
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`70:4–32; Ex. 2001, ¶ 83. “In contrast to such known constructions, the present
`
`invention provides a mirror assembly that has the reflective element 742 disposed
`
`at and attached to…the mirror casing 744….” Ex. 1001, 70:17–21; Ex. 2001, ¶ 83.
`
`“[S]uch a construction allows for space within the mirror casing that previously
`
`was occupied by the mirror actuators of known or conventional mirror
`
`assemblies.” Ex. 1001, 70:24–27; Ex. 2001, ¶ 83.
`
`The “present invention” is exemplified in Figure 68A (with the mirror
`
`reflective element 742 attached at the support structure 740 and being exterior of
`
`the mirror casing), and stands in direct contrast to the prior “known” arrangement
`
`of Figure 68B:
`
`Fig 68B: “known construction”
`
`Fig 68A: “present invention”
`
`Ex. 2001, ¶ 84.
`
`5
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`Patent No. 10,261,648
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`The Institution Decision stated that ‘648 “does not make a distinction
`
`between” attachment at the peripheral exterior surface of the mirror head and
`
`“inward from that surface.” Institution Decision, 13. Petitioner respectfully
`
`disagrees. See Ex. 2010, ¶¶ 5–6. The exterior mirror reflective element in ‘648 is
`
`attached at the mirror head, not “inboard” of it as in the applied prior art. Ex.
`
`1001, 70:4–11. This is captured in the claim language: “exterior mirror reflective
`
`element fixedly attached at said mirror head.”
`
`‘648 makes a clear distinction between (i) a “frameless reflective element,
`
`such as the types marketed as a prismatic or electrochromic INFINITY™ mirror”
`
`(Ex. 1001, 72:46–48) and (ii) a mirror reflective element having a bezel (such as in
`
`Lupo) at the perimeter region of the front surface of the reflective element (Ex.
`
`1001, 72:60–67). Ex. 2010, ¶¶ 5–6. Via incorporation by reference in its entirety
`
`of WO2011/044312A1 (see Ex. 1001, 72:56–60; attached as Exhibit 2011), ‘648
`
`discloses benefits of attachment at the peripheral exterior surface of the mirror
`
`head rather than inward (and thus using a bezel). For example, beyond providing
`
`an enhanced aesthetically pleasing appearance, the reflective/viewing area of a
`
`mirror assembly using a frameless reflective element is increased, since the mirror
`
`assembly does not include a bezel portion or the like that overlaps the perimeter
`
`region of the front surface of the front substrate of the reflective element. Ex.
`
`2011, 18–19.
`
`6
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`Patent No. 10,261,648
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`Additionally, the term “at”—unlike “to”—specifically “indicat[es] a location
`
`in a particular place or position.” Schultz v. iGPS Co. LLC, No. 10 C 0071, 2013
`
`WL 212927, *6–*7 (N.D. Ill. 2013) (construing “at” to mean “indicating a location
`
`in a particular place or position” rather than “in, on, or near”); see also Summer
`
`Infant (USA), Inc. v. Tomy International, Inc., No. 17-549JJM, 2019 WL 4596780,
`
`*7–*8 (D.R.I. 2019), adopting report and recommendation, No. 1:17-cv-00549-
`
`MSM-PAS, 2020 WL 1531403, *1 (D.R.I. Mar. 31, 2020) (finding that “‘joined,’
`
`which, when followed by ‘at,’ has a plain and ordinary meaning” of the joinder of
`
`two features to each other); Weekend Warriors Trailers v. Thor California Inc.,
`
`No. CV-03-2223, 2005 WL 6225203, *3 (C.D. Cal. 2005) (construing “attached
`
`to” as “fastened or affixed in the proximity of”). By reciting “attached at,” the
`
`claim specifically indicates the reflective element is attached in a “particular
`
`place,” here the exterior peripheral surface, not just in the “proximity of” the
`
`mirror head.
`
`If the drafters of the ‘648 claims intended to encompass embodiments where
`
`the mirror reflective element is inboard of the open end of the mirror casing, they
`
`could have described it as such. iGPS Co. LLC at *6–*7; see also Media
`
`Technologies Licensing, LLC v. The Upper Deck Company, No. SA CV 01-1198
`
`AHS, 2008 WL 6023808, *1 (C.D. Cal. 2008) (construing “attached” to mean
`
`“directly joined to the exterior surface (and not incorporated into)”).
`
`7
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`IPR2020-00777
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`Patent No. 10,261,648
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`The “present invention” of Figure 68A, in contrast to the “known”
`
`arrangement of Figure 68B, allows the mirror reflective element to have a
`
`“frameless” or “bezelless” look, as opposed to an appearance where the mirror
`
`reflective element is “framed” by the outside portion of the mirror casing. Ex.
`
`2001, ¶¶ 84–88; Ex. 1001, 42:50–52, 55:3–19, 72:46–67.
`
`The Board found the “frameless” look as an optional feature of the
`
`invention. Institution Decision, 13. Patent Owner respectfully disagrees.
`
`Nowhere does ‘648 recite an exterior mirror element encased within the mirror
`
`housing, except in the prior art arrangement of Figure 68B, which the ‘648
`
`invention distinguishes and improves upon. By contrast, the “frameless” look is a
`
`necessary benefit of the “present invention” in which the reflective element is
`
`attached at the peripheral exterior surface of the mirror head, rather than inboard of
`
`it like the prior art.
`
`The “claim language is [not] broader than the embodiment” in which the
`
`reflective element is attached at the peripheral exterior surface of the mirror head,
`
`as was the case in SuperGuide Corp. v. DirectTV Enters., Inc., 358 F.3d 870, 875
`
`(Fed. Cir. 2004). Rather, the claim expressly requires the “exterior mirror
`
`reflective element” is “fixedly attached at said mirror head.” Accordingly, “[t]his
`
`is not a case where ‘extraneous’ limitations from the specification are being read
`
`into the claim,” but rather “the question is what effect to give to words in the
`
`8
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`IPR2020-00777
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`Patent No. 10,261,648
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`claim.” Corning Glass Works v. Sumitomo Electric USA, Inc., 868 F.2d 1251,
`
`1257 (Fed. Cir. 1989). “It is entirely proper to use the specification to interpret
`
`what the patentee meant by a word or phrase in the claim.” Id.
`
`Where, as here, the patent “describes the features of the ‘present invention’
`
`as a whole, this description limits the scope of the invention.” Verizon Services
`
`Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007); see also
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343
`
`(Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the
`
`‘present invention’ is strong evidence that the claims should not be read to
`
`encompass the opposite structure”). “[T]he patent monopoly does not extend
`
`beyond the invention described and explained as the statute requires.” Schriber-
`
`Schroth Co. v. Cleveland Trust Co., Chrysler Corp., 305 U.S. 47, 57 (1938). Thus,
`
`because “the invention” has the mirror reflective element attached at the peripheral
`
`exterior surface portion of the mirror head, not inboard of it like the prior art, the
`
`claims should not be construed to broadly capture more than that.
`
`Even if the Board considered the claims “fairly susceptible to two
`
`constructions,” it should adopt the one that “will secure to the patentee his actual
`
`invention,” Smith v. Snow, 294 U.S. 1, 14 (1935), not the one that is broader. Even
`
`if the Board considered the limitation “ambiguous,” the claim “should be construed
`
`to preserve its validity.” Ruckus Wireless, Inc. v. Innovative Wireless Solutions,
`
`9
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`Patent No. 10,261,648
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`824 F.3d 999, 1004 (Fed. Cir. 2016); Modine Mfg. Co. v. U.S. Int'l Trade Comm’n,
`
`75 F.3d 1545, 1556 (Fed. Cir. 1996); Phillips, 415 F.3d at 1327.
`
`Here, the claims unambiguously recite that the mirror reflective element is
`
`fixedly attached at a peripheral exterior surface portion of said mirror head. The
`
`Board considered the limitation susceptible to a broader reading, one not limited to
`
`attachment at a peripheral exterior surface of said mirror head. Even if the
`
`limitation were ambiguous in that fashion, the Board nevertheless should not have
`
`adopted the broader meaning that impermissibly captures the very prior art that the
`
`‘648 invention sought to overcome. Ruckus Wireless, 824 F.3d at 1004. Applying
`
`all the available tools of claim construction preserves validity of independent
`
`claims 1, 15 and 26.
`
`Other claims support Patent Owner’s construction. Claim 2,
`
`for example, recites that the “exterior mirror reflective element”
`
`has an “outermost front perimeter edge” that is “rounded.” Fig.
`
`68A of ‘648 (partially shown to the right) has the outermost glass
`
`edge of mirror reflective element 742 of the exterior mirror
`
`assembly exposed to and contactable by a person, and with no part of mirror casing
`
`or shell 744 overlapping onto or over the outermost glass surface of mirror
`
`reflective element 742. As discussed below, a POSA would understand that an
`
`10
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`IPR2020-00777
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`Patent No. 10,261,648
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`unfinished exposed glass edge is a safety hazard in such a construction. Ex. 2001,
`
`¶¶ 101–107.
`
`Claim 2 explicitly recites that this exposed edge (contactable upon impact of
`
`the exterior mirror assembly with an object or person, as it is in all of the exterior
`
`mirror embodiment figures depicted in ‘648) is rounded. See id., ¶ 88. Claim 2
`
`thus further supports that the reflective element of claims 2, 16 and 33 is attached
`
`“at” the peripheral exterior surface portion of the mirror head, leaving claim 2’s
`
`rounded outermost front perimeter edge exposed. Id.
`
`Petitioner’s arguments are premised on a broad reading of the claim phrase
`
`“mirror reflective element fixedly attached at said mirror head” that would
`
`impermissibly capture both the prior art and the ’648 invention.
`
`B.
`
`“A Bracket To Which Said Exterior Mirror Reflective Element Is
`Fixedly Attached”
`Petitioner’s Construction
`A bracket that is either directly or
`indirectly attached to said exterior
`mirror reflective element.
`
`Patent Owner’s Construction
`A bracket that is directly attached to
`said exterior mirror reflective element.
`
`Petitioner construes “fixedly attached” to cover both direct and indirect
`
`attachment of the “mirror reflective element” to the “bracket.” Petition, 5–6, 20
`
`n.1. In applying this to claim 3, Petitioner contends that the claimed “bracket” may
`
`be indirectly (through intermediary structures) attached to the “mirror reflective
`
`element.” Id., 20 n.1. Petitioner’s construction, to the extent it encompasses
`
`11
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`Patent No. 10,261,648
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`“indirect” attachment of the “mirror reflective element” to the “bracket,” is
`
`incorrect. See Ex. 2001, ¶¶ 89–96.
`
`Petitioner’s construction is divorced from, and does not rely on, the intrinsic
`
`record. Contrary to Phillips, Petitioner does not analyze the claim language, the
`
`specification and its disclosed embodiments, or what the specification teaches is
`
`the invention. See Petition, 5–6. Courts have a clear preference for intrinsic
`
`evidence because extrinsic evidence is generally less reliable. Continental Circuits
`
`LLC v. Intel Corp., 915 F.3d 788, 799 (Fed. Cir. 2019). Petitioner’s failure to
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`apply the intrinsic evidence, or even to consider the extrinsic evidence in view of
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`the intrinsic record, undermines its construction.
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`Petitioner cites solely to “less reliable” extrinsic evidence—two district court
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`Markman Orders, and a Second Circuit opinion from 1948—purporting to support
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`its proposed construction. Id.; Phillips, 415 F.3d at 1317–18. But Petitioner’s
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`hand-picked citations overlook the multitude of other decisions that find the
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`opposite—that a claimed attachment only covers direct attachment, not indirect. In
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`Southco, Inc. v. Fivetech Technology, Inc., the Federal Circuit affirmed a
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`construction of “attached” to mean direct attachment. 611 Fed. Appx. 681, 2015
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`WL 1609846, *2–*3 (Fed. Cir. 2015). There the construction turned on the
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`particular use of the term “attached” in the context of the claim language in which
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`it appeared. Id. The construction also followed from the specification’s disclosed
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`embodiments, as well as its use of the term in the same sense as applied in the
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`claims. Id.
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`Likewise, in QDS Injection Molding, L.L.C. v. United Maxon, Inc., the court
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`held the term “attached to” required “direct attachment.” No. SACV 09-1412
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`DOC RNB, 2011 WL 1706512, *3–*7 (C.D. Cal. 2011). The decision turned on
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`the intrinsic record where the specification referred to “glue as the relevant
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`bonding material” for two pieces. Id. at *4. The court reasoned that this
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`“reference to glue” “indicates” that the two pieces are “attached directly to one
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`another.” Id. at *5; see also Searfoss v. Pioneer Consolidated Corp., 374 F.3d
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`1142, 1149–50 (Fed. Cir. 2004) (affirming construction of “connecting” to require
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`direct connection where all of the figures in the specification showed a direct
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`connection); Nellcor Puritan Bennet, Inc. v. Portex, Inc., No. C 04-1934 VRW,
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`2005 WL 6218588, *9 (N.D. Cal. 2005) (“After reading the term in light of the
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`specification and the claim language, the court construes ‘attached’ as connected
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`directly. Nowhere in the specification are the housings described as ‘connected
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`through one or more intermediate structures.’”).
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`Consistent with Phillips, these cases establish that, for a term like “attach,”
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`generic reference to extrinsic sources may lead to an improper construction. Also,
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`the term “fixedly attach” cannot be construed without reference to the term’s use in
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`the specific context of the specific claim. As in the cases discussed above, the
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`intrinsic record supports Patent Owner’s construction, and contradicts Petitioner’s.
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`First, and most critically, the claim language itself does not allow for an
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`indirect attachment of the mirror reflective element to the bracket. Claim 1
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`requires: “an exterior mirror reflective element fixedly attached at said mirror
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`head.” Claim 3 (dependent on claim 1) further requires: “wherein said mirror head
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`comprises a bracket to which said exterior mirror reflective element is fixedly
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`attached.” Taken together, it is clear from the claim language that the “bracket” is
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`a particular component of the “mirror head” that attaches the “mirror reflective
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`element” to the “mirror head.” Given this, the bracket cannot be merely some
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`portion of the mirror head that does not serve to directly attach the mirror reflective
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`element to the mirror head, such that the bracket is only indirectly attached to the
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`mirror reflective element.
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`By pointing out the precise component of the mirror head “to which said
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`exterior mirror reflective element is fixedly attached,” the claims exclude the
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`possibility of indirect attachment of the mirror reflective element to the “bracket.”
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`Indeed, the specific use of the words “to which” in claim 3 further supports a
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`finding of direct attachment.
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`The other dependent claims that also recite the bracket as “fixedly attached”
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`to the mirror reflective element further support Patent Owner’s construction.
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`Claim 4, for example, recites: “a bracket to which said exterior mirror reflective
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`element is fixedly attached by use of an adhesive.” An attachment between two
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`components by “use of an adhesive” can only mean a direct attachment of one to
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`another. See QDS Injection Molding, 2011 WL 1706512, at *3–*7 (finding
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`“reference to glue” as clear indication of direct attachment). Nothing in the claims
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`states or implies that the attachment of the mirror reflective element to the bracket
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`can be by way of an intermediary component.
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`Petitioner relies on Figure 56 as supporting its broad construction, pointing
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`to “bracket (616)” as “indirectly” attached to reflective element 612. Petition, 20
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`n1. This presumes that “any bracket attached to the mirror housing, and
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`connecting the mirror housing to some other component” would be encompassed
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`by the claims. See Institution Decision, 22.
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`However, “Figure 56 of the ‘648 patent does not appear to support how
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`Petitioner views an indirect attachment.” Id., 21–22.
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`Ex. 1001, Fig. 56. The specification states: “reflective element 612” “is attached at
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`a rear attaching portion 614a of a mirror head housing 614.” Id., 58:58–65. “[T]he
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`reflective element is adhered at a rear attaching surface of the mirror head
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`housing….” Id., 58:65–67. This lines up with the claim language discussed
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`above. Accordingly, in Figure 56, it is the “attachment portion 614a” that serves as
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`the bracket that most closely aligns with the “bracket” as set forth in the claims.
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`Ex. 2001, ¶ 96.
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`By contrast, the “mounting element 616” is not described as “attached” to
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`the mirror reflective element. Ex. 2001, ¶ 96. Rather, “mounting element 616” “is
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`attached at a first actuator 618,” on the one side, and at the “mirror head housing
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`614,” on the other. Ex. 1001, 59:7–9. Thus, Petitioner misinterprets ’648 by
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`asserting that “Fig. 56 of the ’648 patent, [] discloses a reflective element (612)
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`fixedly, and indirectly, attached to a bracket (616) via the mirror housing (614).”
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`Petition, 20 n.1.
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`Indeed, ‘648 uses the term “fixedly attached” synonymously with the term
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`“adhered”: “The mirror reflective element can be adhered or otherwise fixedly
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`attached at a surface or mounting portion of the mirror head…” Ex. 1001, 71:53–
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`55. Adhering one object to another, of course, refers to sticking or otherwise
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`creating a bond. See id., 29:66–30:1 (describing “adhered” “via a foam tape or
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`adhesive tape 242 or the like”); see also id., Fig. 26A (showing use of “adhesive
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`tape 242” to attach the mirror reflective element to the mirror head). This is
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`plainly direct attachment.
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`Figure 68 of ‘648 further illustrates the direct attachment between the
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`“bracket 734” (blue) and the “mirror reflective element 742” (green):
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`Ex. 1001, Fig. 68 (colored). Accordingly, nowhere in the specification are mirror
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`reflective elements described as attached to the bracket through any intermediate
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`structure. Nellcor Puritan Bennet, 2005 WL 6218588, *9 (“Nowhere in the
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`specification are the housings described as ‘connected through one or more
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`intermediate structures.’”).
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`Petitioner cites a Wikipedia page discussing an “architecture” “bracket.”
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`Petition, 19 (citing Ex. 1011). A POSA would not consult an architectural
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`definition of “bracket” to learn the plain meaning of “bracket” in the context of
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`‘648 and its inventive mirror assemb