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 Preliminary Response
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`TABLE OF CONTENTS
`
`B.
`
`C.
`
`Page
`TABLE OF AUTHORITIES .................................................................................... iv
`LIST OF EXHIBITS .................................................................................................. v
`I.
`Introduction ...................................................................................................... 1
`II.
`The ’648 Patent ................................................................................................ 2
`III. A Person Having Ordinary Skill In The Art .................................................... 7
`IV. Claim Construction .......................................................................................... 8
`A.
`“Exterior Mirror Reflective Element Fixedly Attached At Said
`Mirror Head” ......................................................................................... 8
`“A Bracket To Which Said Exterior Mirror Reflective Element
`Is Fixedly Attached” ............................................................................ 15
`“Wherein The Outermost Front Perimeter Edge Of Said
`Exterior Mirror Reflective Element Is Rounded” ............................... 19
`“Rearward Field of View” ................................................................... 22
`D.
`“Yaw” And “Roll”............................................................................... 27
`E.
`The Petition Fails To Establish A Reasonable Likelihood That
`Petitioner Will Prevail ................................................................................... 30
`A.
`Ground 1: Lupo, Alone or In Combination With Other
`References, Does Not Disclose All Of The Elements Of The
`Challenged Claims .............................................................................. 30
`1.
`Lupo Does Not Disclose “An Exterior Mirror Reflective
`Element Fixedly Attached At Said Mirror Head” (Claim
`1, 15, 26) ................................................................................... 30
`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) ........................... 32
`
`V.
`
`2.
`
`i
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`3.
`
`4.
`
`5.
`
`Lupo Does Not Disclose “Wherein Said Mirror Head Is
`Disposed At One End Of Said Support Structure And
`Wherein Said Attachment Portion Is At A Distal Other
`End Of Said Support Structure” (Claims 5, 20, 26) ................. 34
`Lupo Does Not Disclose “Wherein Said First
`Electrically-Operable Actuator Is Operable At A Speed
`Different Than A Speed Of Operation Of Said Second
`Electrically-Operable Actuator” (Claims 13, 28) ..................... 37
`Lupo Does Not Disclose “Wherein Said First And
`Second Pivot Axes Are Angled Non-Orthogonally
`Relative To One Another” And “At An Angle That Is
`Greater Than 15 Degrees And Is Less Than 90 Degrees”
`(Claims 10–11, 23, 34–35) ........................................................ 41
`Lupo Does Not Disclose “Wherein Said Multi-Axis
`Adjustment Mechanism Is Operable For … Roll
`Adjustment” (Claims 9, 25, 31, and 36) ................................... 45
`Ground 1(b): The Combination Of Lupo and McCabe Does
`Not Render The Challenged Claims Obvious ..................................... 47
`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 ...... 50
`One Of Skill In The Art Would Avoid Combining The
`Electro-optic Feature Of McCabe With Lupo (Claims
`16–23, 26–36) ........................................................................... 51
`Ground 2(a): Tsuyama Does Not Render The Challenged
`Claims Obvious ................................................................................... 52
`1.
`Tsuyama Fails To Disclose Or Render Obvious An
`“Exterior Rearview Mirror Assembly” As Required By
`Every Claim .............................................................................. 53
`
`6.
`
`2.
`3.
`
`B.
`
`C.
`
`ii
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`2.
`
`3.
`
`4.
`
`5.
`
`Tsuyama Does Not Disclose “An Exterior Mirror
`Reflective Element Fixedly Attached At Said Mirror
`Head” (Claims 1, 15, 26) .......................................................... 57
`Tsuyama Does Not Disclose Both An “Attachment
`Portion” And A “Support Structure” That Moves
`Relative To The Vehicle (Claims 5, 20, 26) ............................. 59
`Tsuyama Does Not Disclose Wherein Said First And
`Second Electrically-Operable Actuators Are
`“Cooperatively Operable” To Adjust Said Mirror Head
`(Claims 12, 24, 27) .................................................................... 61
`Tsuyama Does Not Disclose “Wherein Said Multi-Axis
`Adjustment Mechanism Is Operable For … Yaw
`Adjustment” (Claims 9, 25, 31, and 36) ................................... 62
`Ground 2(b): The Combination of Tsuyama and McCabe Does
`Not Render the Challenged Claims Obvious ...................................... 65
`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) ...................................................................... 65
`Because Tsuyama Is Not A Rear-View Mirror Used For
`Driving, There Is No Reason To Modify It In View Of
`McCabe ..................................................................................... 66
`VI. Conclusion ..................................................................................................... 68
`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24 ............................. 70
`CERTIFICATE OF SERVICE ................................................................................ 71
`
`D.
`
`2.
`
`Note: All emphasis in this brief added, unless otherwise indicated.
`
`iii
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`CASES
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ...................................................... 8, 21
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) .......................................................................... 14
`Transclean Corp. v. Bridgewood Services, Inc.,
`290 F.3d 1364 (Fed. Cir. 2002) .......................................................................... 44
`Verizon Services Corp. v. Vonage Holdings Corp.,
`505 F.3d 1295 (Fed. Cir. 2007) .......................................................................... 13
`OTHER AUTHORITIES
`49 C.F.R. § 571.111 ................................................................................................. 21
`ECE 324, Regulation 46 .................................................................................... 21, 22
`
`iv
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`LIST OF EXHIBITS
`
`Exhibit
`2001
`
`Description
`Declaration of Michael Nranian
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`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
`
`v
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`I.
`
`Introduction
`The exterior mirror assembly claimed in the ’648 patent fundamentally
`
`simplifies and streamlines the construction to allow for numerous benefits not
`
`possible in the prior art. For example, the ’648 patent provides for a “reflective
`
`element” that is attached directly at the mirror head, allowing the reflective
`
`element to have “a smooth or continuous transition” with the mirror housing, an
`
`exposed and rounded edge, and giving it an attractive “infinity pool” look. Ex.
`
`1001, 58:56–59:6. The arrangement also allows for the ’648 patent’s unique
`
`“multi-axis adjustment mechanism,” which allows the driver to adjust the
`
`reflective element about the vehicle’s yaw, pitch, and roll axes. That mechanism
`
`includes multiple motors that can work in a cooperative fashion and at different
`
`speeds to “provide a smooth adjustment of the mirror reflective element and
`
`rearward field of view.” Ex. 1001, 60:30–41.
`
`Petitioner is unlikely to succeed because the prior art on which it relies fails
`
`to disclose these claimed features. Both Lupo and Tsuyama are typical of the
`
`known prior art, having a “reflective element” that is recessed within the mirror
`
`casing with covered edges. Because of that recessed arrangement, there is no
`
`“smooth or continuous” transition with the mirror housing, and the edges of the
`
`reflective elements are not “rounded.”
`
`1
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`Lupo fails to disclose other claim requirements of the ’648 patent. Lupo’s
`
`only embodiment has motors arranged for movement about two axes exactly 90
`
`degrees apart. Those motors do not operate in a cooperative fashion at different
`
`speeds, as claimed, and do not provide for adjustment about a roll axis, as claimed.
`
`Lupo, alone or in combination with other art, does not render the ’648 claims
`
`obvious.
`
`Tsuyama is even further off the mark. It shows a “rear under” mirror at the
`
`back of the vehicle; it does not disclose a “rearview mirror assembly” providing for
`
`a “rearward field of view” to a driver.1
`
`For the reasons below, none of the cited references render the challenged
`
`claims obvious. The Petition should be denied outright.
`
`II.
`
`The ’648 Patent
`As its title indicates, the ’648 patent and its claims are directed to an
`
`“Exterior Rearview Mirror Assembly.” Ex. 1001, Title; see Ex. 2001, ¶¶ 58–74.
`
`The patent describes specific exterior
`
`rearview mirror assembly
`
`embodiments beginning with Figure 56 and the accompanying discussion. The
`
`embodiment of Figure 56 includes a first and second actuator, 618 and 622, that
`
`impart a rotation about a “first pivot axis 618a” and a “second pivot axis 622a,”
`
`1 The Tsuyama mirror allows a driver executing a rear backup maneuver to view
`the ground area immediately and directly behind the vehicle to check whether or
`not there is a child or other hazard present immediately behind the vehicle. Ex.
`2001, ¶ 183.
`
`2
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`respectively. Ex. 1001, 59:7–18; Ex. 2001, ¶ 62. “The pivot axes may be angled
`
`relative to one another to provide the desired cooperative pivoting of the mirror
`
`head and reflective element relative to the side of the vehicle at which the mirror
`
`assembly is mounted.” Ex. 1001, 59:39–42.
`
`Second pivot
`axis (622a)
`
`First pivot
`axis (618a)
`
`Id., Fig. 56 (annotated).
`
`“Because of the angled relationship of the axes of rotation of the
`
`actuators…the first and second actuators may be operated
`
`together or
`
`cooperatively operated to laterally adjust the rearward field of view while
`
`maintaining a generally constant tip angle (and without also vertically adjusting the
`
`rearward field of view of the reflective element).” Id., 59:55–62.
`
`With respect to the mechanical arrangement of the system, the ’648 patent
`
`explains:
`
`3
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`the multi-axis actuating mechanism, such as the dual
`actuator mechanisms described above, of the present
`invention
`may
`be
`incorporated
`into
`a
`mounting/attachment device/element/unit that attaches or
`mounts at a side of a vehicle at a location where
`conventional exterior sideview mirrors are typically
`disposed, and is actuatable to adjust, via a support arm or
`structure, an attachment element or bracket (that is
`disposed at a distal end of the support arm or structure
`from the side of the vehicle) about multiple degrees of
`freedom with respect to the side of the vehicle in order
`that the rearward field of view of a mirror reflective
`element supported by, and adjusting in tandem with, the
`bracket can be adjusted by the actuating mechanism via
`the support arm structure to allow the driver to adjust his
`or her rearward and/or sideward field of view.
`Id., 67:53–67.
`
`Although the Petition overlooks it entirely, Figure 68 (below) is particularly
`
`relevant to the arrangement of the mechanical features as claimed in the ’648
`
`patent. Ex. 2001, ¶¶ 63–67. It discloses a support structure 740 (red) disposed
`
`between an attachment structure 736 (orange), a bracket 734 (blue), and a mirror
`
`reflective element 742 (green). Ex. 1001, 68:25–50. The attachment structure 736
`
`is attached to the side of a vehicle 732 (gray) and houses the actuators depicted at
`
`738 (purple). Id.
`
`4
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`Ex. 1001, Fig. 68 (colored).
`
`In this arrangement, “adjustment of the support arm or structure causes a
`
`corresponding tandem adjustment of the attachment element 736 and of the mirror
`
`reflective element 742 to adjust the rearward field of view of the driver of the
`
`vehicle and/or to provide a powerfold function for the mirror reflective element.”
`
`Id., 68:57–26. As such, the support structure 740 “may be pivoted up/down and
`
`forward/rearward and any directions in between, and the arm may be rotated about
`
`its longitudinal axis to further adjust the arm and the attachment element and the
`
`reflective element relative to the side of the vehicle (thus providing independent
`
`and/or cooperative pitch, yaw and roll adjustment of the reflective element relative
`
`to the side of the vehicle).” Id., 68:43–50.
`
`5
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`In addition, Figure 68A (below) shows “a mirror casing or shell 744”
`
` that “may be readily attached at the mirror attachment element or bracket or to the
`
`mirror reflective element itself in order to provide the desired or appropriate
`
`appearance or styling of the exterior rearview mirror at the side of the vehicle and
`
`to provide mechanical protection of the reflective element and the like from
`
`environmental exposure.” Id., 68:62–69:1.
`
`Ex. 1001, Fig. 68A (colored), Fig. 68B; Ex. 2001, ¶ 84.
`
`The arrangement of Figure 68A improves over the known arrangement
`
`shown in Figure 68B (above) in that it “allows for space within the mirror casing
`
`that previously was occupied by the mirror actuators of known or conventional
`
`mirror assemblies.” Id., 70:23–32; Ex. 2001, ¶ 66.
`
`6
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`The actuator 738 (purple) disclosed in the embodiments of Figures 68 and
`
`68A is arranged so as to be “cooperatively operable similar to the dual actuators of
`
`the mirror assemblies described above” with respect to at least Figure 56. Ex.
`
`1001, 68:36–40.
`
`Moreover, the mirror reflective element (green) is attached at the mirror
`
`casing in a way that “provides a frameless exterior or sail mount mirror assembly.”
`
`Id., 71:40–44. The invention allows for the actuators to “adjust the mirror head
`
`and the reflective element in tandem” via the support arm 740 (red) rather than
`
`adjusting “the reflective element relative to the mirror casing.” Id., 71:45–47.
`
`III. A Person Having Ordinary Skill In The Art
`For purposes of this response, Patent Owner submits a person having
`
`ordinary skill in the art of the ’648 patent 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.
`
`7
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`IV. 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 of this term,
`
`presumably contending that any connection between a mirror reflective element
`
`and a mirror head will suffice. That is incorrect. Rather, the meaning of the claim
`
`term to one of ordinary skill in the art is 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.
`
`Patent Owner’s construction 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, 1315–16 (Fed. Cir. 2005) (en banc) (“[T]he specification ‘is
`
`always highly relevant to the claim construction analysis. Usually it is dispositive;
`
`it is the single best guide to the meaning of a disputed term.’”). For example,
`
`Figure 58A shows an exterior mirror having a “mirror reflective element” 612
`
`(green) fixedly attached at the “mirror head” 614 (blue):
`
`8
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`Mirror reflective
`element (612)
`
`Mirror
`head (614)
`
`Ex. 1001, Fig. 58A (annotated and colored). As this figure illustrates, the mirror
`
`reflective element is an element that is separate from the mirror head, and that is
`
`attached to a particular peripheral exterior surface portion of the mirror head, rather
`
`than recessed within the mirror head. Ex. 2001, ¶¶ 78–81.
`
`The same is true of every single exterior mirror embodiment set forth in the
`
`specification. Ex. 2001, ¶ 80. Figures 56 and 56A likewise show the mirror
`
`reflective element 612 as a separate element that is attached to the peripheral
`
`exterior surface portion of the mirror head 614.
`
`9
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`Ex. 1001, Fig. 56 (colored); Ex. 2001, ¶ 78. Figure 68A does too:
`
`FIG. 68A
`
`Ex. 1001, Fig. 68A (colored); Ex. 2001, ¶ 84.
`
`The attachment of the mirror reflective element “at the mirror head” is
`
`described in the very first line of the abstract: “an exterior mirror reflective element
`
`fixedly attached at the mirror head.” Ex. 1001, Abstract; Ex. 2001, ¶ 86. Such a
`
`configuration provides “a smooth or continuous transition between the generally
`
`10
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`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, the ’648 specification distinguishes between “known exterior
`
`mirror constructions” and the patented arrangement 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” is the one shown in Figure 68B (below),
`
`and 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.” Ex. 1001, 70:4–11; Ex. 2001, ¶ 83. A problem with that arrangement,
`
`according to the ’648 patent, is that it limits the “space within the mirror casing.”
`
`Ex. 1001, 70:23–27; Ex. 2001, ¶ 83.
`
`11
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`The ’648 patent overcomes that problem 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, 70:4–32; Ex. 2001, ¶ 83. “In contrast to such known
`
`constructions, the present invention provides a mirror assembly that has the
`
`reflective element disposed at and attached to…the mirror casing 744….” Ex.
`
`1001, 70:17–21; Ex. 2001, ¶ 83. Not only does that allow “the reflective element
`
`and mirror casing [to] move in tandem,” “such 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, 70:17–27; Ex. 2001, ¶ 83.
`
`The arrangement thus leaves the “space within the mirror casing” to be
`
`“substantially open.” Ex. 1001, 70:27–31; Ex. 2001, ¶ 83. The “present
`
`invention” arrangement 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:
`
`12
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`Fig 68B: “known” construction
`with the reflective element “disposed
`in or housed in” mirror casing
`
`Fig 68A: “present invention”
`construction with the reflective
`element “disposed at” mirror casing
`
`Ex. 2001, ¶ 84.
`
`In addition, it is the arrangement as shown in the “present invention” of
`
`Figure 68A, in contrast to the “known” arrangement of Figure 68B, that allows for
`
`the mirror reflective element to have a “frameless” 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. The “frameless” configuration may also
`
`be referred to as a “bezelless” configuration. See, e.g., Ex. 1001, 42:50–52, 55:3–
`
`19, 72:46–67; Ex. 2001, ¶ 87.
`
`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., 505 F.3d 1295, 1308 (Fed. Cir. 2007); see also
`
`13
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`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”).
`
`Further, other claims, including, for example, claim 2, support Patent
`
`Owner’s construction. Claim 2 recites that the “exterior mirror reflective element”
`
`has an “outermost front perimeter edge” that is “rounded.” The entire point of
`
`machining an edge of the mirror reflective element to be rounded is to protect a
`
`user from a sharp exposed edge. Ex. 2001, ¶¶ 88, 101. Claim 2 thus explicitly
`
`indicates that the edge is exposed (and so contactable upon impact of the exterior
`
`mirror assembly with an object or person), as it is in all of the exterior mirror
`
`embodiments of the ’648 patent. Id., ¶ 88. Claim 2 thus further supports both that
`
`the mirror reflective element is separate from the mirror head, and that it is
`
`attached “to” the peripheral exterior surface portion of the mirror head, leaving the
`
`reflective element’s outermost front perimeter edge exposed. Id.
`
`Petitioner’s arguments are premised on a 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. Patent Owner’s proposed
`
`construction is the only construction provided and is fully supported by the
`
`intrinsic evidence, and therefore should be adopted.
`
`14
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`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” as covering both direct and indirect
`
`attachment. Petition for IPR, Paper No. 1 (hereinafter “Petition”), 4–5. In
`
`applying that construction to claim 3, Petitioner contends that the claimed
`
`“bracket” may be either directly or indirectly (through some other intermediary
`
`structure) attached to the “mirror reflective element.” Id., 20, n.1. Petitioner’s
`
`construction is incorrect. See Ex. 2001, ¶¶ 89–96.
`
`To start, Petitioner’s own cited evidence undermines its construction.
`
`Petitioner cites extrinsic evidence that states: “In mechanical engineering a bracket
`
`is any intermediate component for fixing one part to another, usually larger, part.
`
`What makes a bracket a bracket is that it is intermediate between the two and fixes
`
`the one to the other.” Petition, 19–20 (quoting Ex. 1011, 1). That passage makes
`
`clear that, by definition, a bracket serves as an intermediate component directly
`
`attaching one structure on one side and another structure on the other side. Ex.
`
`2001, ¶ 92.
`
`The claims use the term “bracket” in the very sense stated in Petitioner’s
`
`extrinsic evidence. Claim 3, for example, recites that the “bracket” is “fixedly
`
`15
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`attached” to the “exterior mirror reflective element.” Claim 6, likewise, recites that
`
`a “support structure attaches at said bracket.” By their very terms, therefore, the
`
`claims require that the bracket be an intermediary structure with the “mirror
`
`reflective element” directly attached to one side, and the “support structure”
`
`directly attached to the other side. Ex. 2001, ¶¶ 94–95.
`
`Moreover, the claims themselves identify that the mirror reflective element
`
`is fixedly attached “to” the bracket, which further confirms the required direct
`
`attachment. The claims do not describe these two elements as having an indirect
`
`attachment or an attachment “about” the bracket; the use of “to” further compels
`
`Patent Owner’s construction.
`
`The specification supports this reading; and the specification does not
`
`support Petitioner’s proffered construction. Figure 68, for example, discloses a
`
`bracket 734 as an intermediary structure directly attached on one side to the mirror
`
`reflective element 742 and directly attached on the other side to the support
`
`structure 740:
`
`16
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`Ex. 1001, Fig. 68 (annotated); Ex. 2001, ¶¶ 94–95.
`
`Moreover, the term “fixedly” is used only in connection with a direct
`
`attachment, never an indirect one. Most significantly, the specification provides:
`
`“The mirror reflective element can be adhered or otherwise fixedly attached at a
`
`surface or mounting portion of the mirror head….” Ex. 1001, 71:53–59. That
`
`passage makes clear that “fixedly attach” conveys a direct attachment to another
`
`structure—here, the mounting portion of the mirror head.
`
`Further, Petitioner misinterprets the ’648 patent by asserting that “Fig. 56 of
`
`the ’648 patent, [] discloses a reflective element (612) fixedly, and indirectly,
`
`attached to a bracket (616) via the mirror housing (614).” Petition, 20 n.1.
`
`However, in Figure 56 (reproduced again below), it is the mounting attachment
`
`614a (orange) that serves as the bracket that most closely aligns with the “bracket”
`
`as set forth in the claims. Ex. 2001, ¶ 96.
`
`17
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`Ex. 1001, Fig. 56 (colored). Element 616 is not the “bracket” that corresponds to
`
`what is recited in the claims. Ex. 2001, ¶ 96.
`
`Regardless, as stated above, it is the embodiments of Figures 68 and 68A
`
`that best exemplify what is claimed, and these embodiments were conveniently
`
`ignored by Petitioner.
`
`Petitioner’s construction if adopted would also lead to absurd results. By
`
`Petitioner’s logic, the mirror assembly is “fixedly attached” (via Petitioner’s
`
`“bracket”) to the vehicle’s rear bumper as well, because the one is “indirectly”
`
`attached to the other through various intermediate components, including the
`
`vehicle’s body. Of course, the mirror assembly is not attached to the rear bumper
`
`18
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`via the claimed bracket. One of skill in the art would reject such an interpretation.
`
`Ex. 2001, ¶ 92. Petitioner’s illogical construction would effectively eliminate this
`
`claim limitation and thus impermissibly broaden the claim’s scope.
`
`Patent Owner’s construction should be adopted.
`
`C.
`
`“Wherein The Outermost Front Perimeter Edge Of Said Exterior
`Mirror Reflective Element Is Rounded”
`Petitioner’s Construction Patent Owner’s Construction
`None
`“wherein the outermost front perimeter edge of said
`exterior mirror reflective element is exposed and has
`at least a 2.5 mm minimum radius of curvature”
`
`Claim 2 recites that the “outermost front perimeter edge” of the “exterior
`
`mirror reflective element is rounded,” and claims 16 and 33 recite that the
`
`“perimeter circumferential edge of said outer first side of said front glass substrate
`
`is rounded.” Petitioner does not offer a construction for the term “rounded” and in
`
`doing so, fails to acknowledge the ordinary meaning of the term to one of skill in
`
`the art reading the ’648 patent.
`
`As an initial matter, the plain meaning of this claim language confirms that
`
`the “outermost front perimeter edge” of the “exterior mirror reflective element” is
`
`exposed. As discussed above, the claims require that the “exterior mirror reflective
`
`element” is “fixedly attached at” the mirror head, which requires that the reflective
`
`element is not recessed within the mirror head. Dependent claims 2, 16, and 33
`
`confirm that the reflective element is left exposed because they recite that the
`
`19
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`“outermost front perimeter edge” of the mirror reflective element must be rounded.
`
`As discussed in more detail below, one of skill in the art would understand that the
`
`rounding disclosed and claimed in the ’648 patent would be unnecessary in
`
`applications where the edge is not exposed. Ex. 2001, ¶¶ 97–108, 139.
`
`Specifically, the specification explains that the “first surface/outermost
`
`perimeter edges” are “rounded” “in order to obviate/avoid a sharp edge at the front
`
`or outermost perimeter surface of the mirror reflective element and mirror
`
`assembly that could potentially hurt/injure an occupant of a vehicle equipped with
`
`the interior rearview mirror assembly during an accident.” Ex. 1001, 28:25–46;
`
`Ex. 2001, ¶ 101. The specification also draws a clear line to one of ordinary skill
`
`in the art to determine whether an edge is “sharp” or “rounded.” Ex. 2001, ¶¶ 98–
`
`100. It provides:
`
`The front glass substrate of the mirror reflective element
`(behind which the sensing pads and sensing circuitry are
`disposed) typically may have a thickness of about 3.2
`mm or thereabouts, such that the perimeter edge portions
`can have a full 2.8 mm radius of curvature to meet the
`requirements of at least a 2.5 mm minimum radius of
`curvature.
`Ex. 1001, 9:38–42.
`
`One of skill in the art reading the ’648 patent would recognize this passage
`
`as expressly defining the minimum radius of curvature required to make an edge of
`
`the mirror reflective element (or first substrate thereof) “rounded.” See Phillips,
`
`20
`
`

`

`IPR2020-00777
`
`Patent No. 10,261,648
`
`415 F.3d at 1321 (“the specification ‘acts as a dictionary when it expressly defines
`
`terms used in the claims or when it defines terms by implication’”) (internal
`
`citations omitted); Ex. 2001, ¶ 100. Anything less than a 2.5 mm radius of
`
`curvature and the edge would not be “rounded,” as claimed, with the claims
`
`requiring that the outermost exposed perimeter edge be sufficiently rounded so as
`
`to provide a safe exposed radius of curvature at a vehicle. Ex. 2001, ¶¶ 99–105. To
`
`that end, elsewhere the specification describes the machining process used to form
`
`the “edge” of the “front glass substrate,” and explains that the edge may be
`
`“ground and polished to provide a desired radius of curvature.” Ex. 1001, 15:49–
`
`60; 19:11–21. Whatever the “desired” radius of curvature may be, one of skill in
`
`the art would know it must meet the “minimum radius of curvature” of “at least”
`
`2.5 mm. Ex. 2001, ¶ 100.
`
`Indeed, one of ordinary skill in the art reading the ’648 patent would know
`
`that the exposed edge of the mirror reflective element must be rounded to a
`
`particular radius of curvature to satisfy minimum safety requirements. Id., ¶¶ 103–
`
`105. For example, Federal Motor Vehicle Safety Standard (FMVSS) No. 111 (49
`
`C.F.R. § 571.111), requires that outside rearview mirrors “are free of sharp points
`
`or edges that could contribute to pedestrian injury.” Id., ¶ 211; Ex. 2003, 12. As
`
`another exam