Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: October 7, 2020
`
`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.
`
`IPR2020-00777
`Patent 10,261,648 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and SCOTT E. BAIN,
`Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
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`IPR2020-00777
`Patent 10,261,648 B2
`On March 31, 2020, Motherson Innovations Co., Ltd. (“Petitioner”)
`filed a Petition requesting an inter partes review of claims 1–13 and 15–36
`of U.S. Patent No. 10,261,648 B2, issued on April 16, 2019 (Ex. 1001, “the
`’648 patent”). Paper 1 (“Pet.”). Magna Mirrors of America, Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Applying
`the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of
`a reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we grant Petitioner’s request and institute an inter
`partes review of all challenged claims based on the grounds asserted in the
`Petition.
`
`
`I. BACKGROUND
`A. The ’648 Patent (Ex. 1001)
`The ’648 patent describes an exterior rearview mirror assembly for a
`vehicle, e.g., a side mirror, mounted on the exterior of a vehicle. Ex. 1001,
`code (57), 58:49–52. Typically, exterior review mirror assemblies include a
`mirror casing (or housing) which holds a mirror reflective element. Id. at
`70:4–6. Further, the position of the mirror reflective element can be
`adjusted so that the driver of the vehicle can see a particular “rearward field
`of view” in the mirror reflective element. See id. at 61:57–59. One “typical
`known exterior mirror construction” has the mirror reflective
`element “disposed in or housed in a mirror casing 764 (and is inboard of the
`open end of the mirror casing and not attached thereto) and is adjustable
`relative to the mirror.” Id. at 70:4–11; see id. at Fig. 68B. That is, the
`mirror reflective element itself is adjusted (or repositioned), while the mirror
`casing is not repositioned. See id. In the ’648 patent, the mirror assembly,
`instead, has its mirror reflective element “disposed at and attached to or
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`IPR2020-00777
`Patent 10,261,648 B2
`otherwise fixed relative to the mirror casing 744, such that, during
`adjustment, the reflective element and mirror casing move in tandem.” Id. at
`70:17–23; see id. at 71:45–57. That is, the mirror casing and the attached
`mirror reflective element are repositioned together to adjust the rearward
`field of view in the mirror reflective element, rather than only repositioning
`the mirror reflective element.
`Figure 56 shows such a mirror assembly and is reproduced below.
`
`
`
`Figure 56 is an exploded perspective view of an exterior rearview mirror
`assembly for “an exterior rearview mirror assembly that is configured for
`mounting at a side region of a vehicle.” Ex. 1001, 5:6–8, 58:50–52. Starting
`at the leftmost element, “exterior rearview mirror assembly 610 comprises a
`reflective element 612,” e.g., a mirror. Id. at 58:56–64. Reflective element
`612 “is attached at a rear attaching portion 614a of a mirror head housing
`614.” Id. at 58:58–65; see id. at 70:18–21 (“a mirror assembly that has the
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`Patent 10,261,648 B2
`reflective element 742 disposed at and attached to or otherwise fixed relative
`to the mirror casing 744”), Fig. 68B. For example, reflective element 612
`can be “adhered or otherwise fixedly attached” to rear attaching portion 614a
`(of mirror head housing 614). Id. at 58:65–67, 71:53–55. Furthermore, “the
`front perimeter edge regions of the reflective element [can be] curved or
`rounded or beveled to provide a smooth or continuous transition between the
`generally planar front surface of the reflective element and the side walls or
`surfaces of the mirror housing.” Id. at 58:67–59:6; see id. at 34:57–36:22,
`Figs. 32–34, 37–39.
`Continuing clockwise in Figure 56, mirror head housing 614 and
`affixed reflective element 612 are attached to a series of brackets and
`rotating actuators. Specifically, “mirror head housing 614 is attached at an
`inner bracket or mounting element 616” which is then “attached at a first
`actuator 618.” Id. at 59:7–9. First actuator 618 can be driven rotationally,
`and, accordingly, “imparts a rotation of bracket 616 and mirror head housing
`614 about a first pivot axis 618a.” Id. at 59:9–12. Still following the
`components clockwise, first actuator 618 “is attached to or mounted at an
`outer bracket 620 that is mounted to or attached to a second actuator 622.”
`Id. at 59:12–14. Second actuator 622 can also be driven rotationally and so,
`“imparts of rotation of bracket 620 and first actuator 618 and bracket 616
`and mirror head housing 614 about a second pivot axis 622a.” Id. at 59:12–
`18. Finally, “second actuator 622 . . . is attached at or disposed at or in an
`outer cover 624” and “outer cover 624 is disposed at or attached to or
`mounted at the side portion of the vehicle (and pivotally or rotatably
`mounted thereat, such as via the actuator 622) when the exterior mirror
`assembly is normally mounted at the side of the vehicle.” Id. at 59:13–22.
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`IPR2020-00777
`Patent 10,261,648 B2
`With such an assembly and mounting design, the driver of a vehicle is
`able to adjust his or her rearward and/or sideward field of view, which is
`reflected in the assembly’s reflective element. Id. at 59:23–26; see id. at
`67:55–67. Specifically, “the mirror head is adjustable about the first and
`second axes (via selective actuation of one or both actuators) to adjust the
`rearward field of view for the driver of the vehicle.” Id. at 59:23–26, 66:48–
`52. The actuators rotate their respective brackets, thereby adjusting the
`position of the mirror head attached to the brackets. Id. at 59:26–39. And,
`because the mirror head and reflective element are attached, adjusting the
`position of the mirror head via the actuators adjusts the position of the
`reflective element in tandem. Id. at 69:5–9, 70:21–23, 71:45–47
`(“[A]ctuators adjust the mirror head and the reflective element in tandem
`(and do not adjust the reflective element relative to the mirror casing).”).
`Further, the actuators are relatively positioned to allow the mirror
`head (and attached reflective element) to be rotated about multiple axes. See
`id. at 59:26–47, 59:55–60:4. For example, “the pivot axes [of the actuators]
`may be angled relative to one another at an angle of at least about 15 degrees
`or at least about 30 degrees or more, such as an angle of up to about 90
`degrees.” Id. at 59:42–46. Further, the multiple axes of rotation include
`“pitch, yaw and roll axes or about a generally vertical axis and/or other axes
`non-coaxial with the first or generally vertical axis or the like.” Id. at 68:19–
`22; see id. at 68:47–50. And, “[b]ecause of the angled relationship of the
`axes of rotation of the actuators and the angled interface or mounting
`interface of the mirror head housing 614 and outer cover 624, the first and
`second actuators may be operated together or cooperatively operated to
`laterally adjust the rearward field of view.” Id. at 59:55–59. Alternatively,
`in other embodiments, “the first and second actuators may be operated
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`separately or together or cooperatively operated to vertically and/or laterally
`adjust the rearward field of view.” Id. at 66:63–67:10; see id. at 68:42–50.
`Additionally, “the actuators 618, 622 may operate at different speeds to
`provide the desired or selected lateral adjustment with limited vertical
`adjustment (and/or to provide a desired or selected vertical adjustment with
`limited lateral adjustment and/or to provide a desired or selected vertical and
`lateral adjustment).” Id. at 60:12–17.
`B. Illustrative Claim
`Of the challenged claims, claims 1, 15, and 26 are independent.
`Claim 1 is reproduced below.
`1. An exterior rearview mirror assembly configured for
`mounting at an exterior portion of a vehicle, said exterior
`rearview mirror assembly comprising:
`a mirror head;
`an exterior mirror reflective element fixedly attached at
`said mirror head;
`an attachment portion configured for attachment at an
`exterior portion of a vehicle equipped with said exterior rearview
`mirror assembly;
`a multi-axis adjustment mechanism comprising at least
`one electrically-operable actuator;
`wherein said multi-axis adjustment mechanism is operable
`to move said mirror head, with said exterior mirror reflective
`element fixedly attached thereto, about multiple axes relative to
`said attachment portion; and
`wherein said exterior mirror reflective element moves in
`tandem with movement of said mirror head relative to the
`exterior portion of the body of the equipped vehicle at which said
`exterior rearview mirror assembly is attached to adjust the
`rearward field of view of a driver of the equipped vehicle who
`views said exterior mirror reflective element when operating the
`equipped vehicle.
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`IPR2020-00777
`Patent 10,261,648 B2
`Ex. 1001, 76:38–60.
`C. Related Proceedings
`Petitioner and Patent Owner state that there are no related proceedings
`involving the ’648 patent. Pet. 74, Paper 4, 1.
`D. References
`Petitioner relies on the following references:
`1.
`“Lupo” (GB 2,244,965 A; published Dec. 18, 1991) (Ex. 1003);
`2.
`“McCabe” (US 7,255,451 B2; issued Aug. 14, 2007)
`(Ex. 1004); and
`3.
`“Tsuyama” (US 6,270,227 B1; issued Aug. 7, 2001) (Ex. 1005).
`E. Grounds Asserted
`Petitioner challenges the patentability of the ’648 patent claims on the
`following grounds:
`
`Claims Challenged
`1, 3, 5–13, 15
`2, 16–17, 19–36
`4
`18
`1, 5, 8–9, 12, 15
`2, 16, 19–20, 24–
`27, 31, 33, 36
`Petitioner also relies on testimony from David R. McLellan.
`(Ex. 1002). In support of its Preliminary Response, Patent Owner relies on
`testimony from Michael Nranian (Ex. 2001).
`
`Lupo
`Lupo, McCabe
`Lupo, Tsuyama
`Lupo, McCabe, Tsuyama
`Tsuyama
`Tsuyama, McCabe
`
`
`References/Basis
`
`
`35 U.S.C. §
`103
`103
`103
`103
`103
`103
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`II. ANALYSIS
`
`A. Legal Principles
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) when in the record, objective
`evidence of nonobviousness.1 See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). In that regard, an obviousness analysis “need not seek out
`precise teachings directed to the specific subject matter of the challenged
`claim, for a court can take account of the inferences and creative steps that a
`person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
`B. Level of Ordinary Skill in the Art
`Petitioner asserts a person of ordinary skill in the art “would have
`possessed at least a bachelor’s degree in mechanical engineering or
`engineering technology with at least two years of experience in the
`automotive industry (or equivalent degree or experience).” Pet. 3 (citing
`Ex. 1002 ¶¶ 34–36.). Petitioner also asserts that a “person could also have
`qualified as a [person of ordinary skill in the art] with some combination of
`(1) more formal education (such as a master’s degree) and less technical
`
`
`1 We are not presented with such evidence at this stage of the proceeding.
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`Patent 10,261,648 B2
`experience, or (2) less formal education and more technical or professional
`experience.” Id. (citing Ex. 1002 ¶¶ 34–36).
`Patent Owner asserts that “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.” Prelim. Resp. 7 (citing Ex. 2001 ¶¶ 35–41; Ex. 2002).
`We determine our decision at this stage of the proceeding would not
`change under either formulation. For purposes of this decision, we apply
`Patent Owner’s formulation which we find consistent with the record, but
`we also agree with Petitioner that more formal education with less technical
`experience and vice versa could suffice. We invite the parties to address this
`issue further during the trial.
`C. Claim Construction
`In an inter partes review, we apply the same claim construction
`standard that would be used in a civil action under 35 U.S.C. § 282(b),
`following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). In applying such
`standard, claim terms are generally given their ordinary and customary
`meaning, as would have been understood by a person of ordinary skill in the
`art, at the time of the invention and in the context of the entire patent
`disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of
`the disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
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`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
`Petitioner and Patent Owner both submit proposed constructions for
`certain claim terms. See Pet. 5–7; Prelim. Resp. 8–30. Below we address
`certain of those disputes.
`1. “an exterior mirror reflective element fixedly attached at said
`mirror head”
`Patent Owner asserts that we should construe the term “an exterior
`mirror reflective element fixedly attached at said mirror head” to mean that
`the mirror reflective element is “fixedly attached to a peripheral exterior
`surface portion of said mirror head.” Prelim. Resp. 8 (citing Ex. 2001
`¶¶ 42–45, 75–88). Petitioner does not propose a construction for this term,
`but instead asks only that we construe the claim term “fixedly attached” to
`mean “securely fastened, either directly or indirectly, and not readily
`detachable.” Pet. 5–6 (citing Ex. 1002 ¶¶ 48–49).
`In support of its proposed construction, Patent Owner cites
`embodiments in the specification of the ’648 patent. See Prelim. Resp. 8–
`13. For example, Figure 58A of the ’648 patent as annotated and colored by
`Patent Owner is reproduced below.
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`Id. at 9 (reproducing Ex. 1001, Fig. 58A with annotations and coloring
`added). Figure 58A is a top perspective view of an exterior rearview mirror
`assembly, showing rotation of the mirror head. Ex. 1001, 5:15–18. Patent
`Owner argues that in this figure, “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.” Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 78–81). Patent
`Owner points to the embodiments in Figures 56 and 68A as having the same
`configuration. Id. at 9–10 (citing Ex. 1001, Figs. 56, 68A; Ex. 2001 ¶¶ 78,
`84).
`
`In addition to these figures, Patent Owner relies on a portion of the
`specification that distinguishes between the known configuration in Figure
`68B and the configuration in Figure 68A. See id. at 11–13 (citing Ex. 1001,
`70:4–32; Ex. 2001 ¶¶ 83–84). Patent Owner also cites portions of the ’648
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`specification discussing a “frameless” or “bezelless” configuration. Id. at 13
`(citing Ex. 1001, 42:50–52, 55:3–19, 72:46–67; Ex. 2001 ¶¶ 84–88). Finally,
`Patent Owner relies on dependent claim 2’s recitation that the “exterior
`mirror reflective element” has an “outermost front perimeter edge” that is
`“rounded,” as support for the reflective element’s outermost front perimeter
`edge being exposed. Id. at 14 (citing Ex. 2001 ¶¶ 88, 101).
`We have reviewed the evidence Patent Owner cites, and we
`preliminarily determine the recitation “an exterior mirror reflective element
`fixedly attached at said mirror head” is not limited in the way Patent Owner
`argues. Figures 68A and 68B of the ’648 patent are reproduced below.
`
`
`Figure 68A is a side view schematic of the ’684 patent’s exterior
`rearview mirror system, whereas Figure 68B is a side view schematic of a
`known construction of an exterior rearview mirror assembly. Ex. 1001,
`5:62–65. The ’684 specification points out numerous differences between
`these two configurations. In the Figure 68B known configuration, mirror
`reflective element 762 is not attached to mirror casing 764, and this lack of
`attachment allows mirror reflective element 762 to adjust relative to mirror
`casing 764. Id. at 70:4–9. In addition, mirror actuator 766 is disposed in
`mirror casing 764 in the Figure 68B known configuration. Id. at 70:9–11.
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`In contrast, in Figure 68A, mirror reflective element 742 is fixed to mirror
`casing 744, and thus during adjustment, the reflective element and casing
`move in tandem. Id. at 70:17–23. “[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.” Id. at 70:24–27.
`On the current record, we do not view the description of Figure 68A
`or its contrast with Figure 68B as limiting “an exterior mirror reflective
`element fixedly attached at said mirror head” to only arrangements where
`the mirror reflective element is attached to “the peripheral exterior surface
`portion of the mirror head, leaving the reflective element’s outermost front
`perimeter edge exposed.” See Prelim. Resp. 14. In particular, the
`description in the ’648 specification does not make a distinction between a
`configuration with the mirror reflective element attached at the peripheral
`exterior surface of the mirror head, and a configuration where the mirror
`reflective element is attached inward from that surface of the mirror head.
`See Ex. 1001, 70:4–32.
`We also determine the other portions of the ’648 specification on
`which Patent Owner relies do not support Patent Owner’s proposed
`construction. Figures 58A, 56, and 56A, and the “frameless” or “bezelless”
`configurations are all described as examples, options, or configurations that
`may be used. See Ex. 1001, 5:6–10, 16–19, 42:45–52, 55:3–19, 58:49–59:6,
`72:46–67; see also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
`870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the
`written description may not be read into a claim when the claim language is
`broader than the embodiment.”).
`Dependent claim 2’s recitation that “the outermost front perimeter
`edge of said exterior mirror reflective element is rounded” does not change
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`our view at this stage of the proceeding. For purposes of this decision, we
`observe that many reasons may exist for rounding an edge of a mirror
`reflective element even if that edge is not exposed at the outer edge of the
`mirror head. For example, Mr. McLellan testifies that these include
`aesthetics and decreasing possibility of injury caused by a sharp edge. See
`Ex. 1002 ¶ 145.
`Accordingly, on the current record and at this stage of the proceeding,
`we determine that “an exterior mirror reflective element fixedly attached at
`said mirror head” is not limited to attachment of the exterior mirror
`reflective element at a peripheral exterior surface portion of said mirror
`head. We determine we need not further construe this term at this stage of
`the proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`2. “yaw” and “roll” (claims 9, 25, 31, and 36)
`Petitioner asks that we construe the term “roll” to mean “a rotation
`about a main axis” and “yaw” to mean “a rotation about a vertical axis
`perpendicular to the main axis.” Pet. 6 (citing Ex. 1002 ¶¶ 50–51). Patent
`Owner contests Petitioner’s construction and asserts that we should construe
`the “roll” to mean “a rotation about a vehicle’s longitudinal axis (in the
`direction from the front of the vehicle to the back of the vehicle)” and the
`“yaw” to mean “a rotation about a vehicle’s vertical axis (in the direction
`from the bottom of the car to the top of the car) perpendicular to a
`longitudinal axis.” Prelim. Resp. 27 (citing Ex. 2001 ¶¶ 117–127).
`At this stage of the proceeding, we do not adopt either parties’
`proposed constructions of these terms. We do, however, provide some
`preliminary observations regarding them. Both parties propose
`constructions of the terms “yaw” and “roll,” in isolation. The claims which
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`use these terms, however, recite a frame of reference for the yaw and roll
`adjustment: “yaw and roll adjustment of said exterior mirror reflective
`element relative to the exterior portion of the equipped vehicle at which said
`exterior rearview mirror assembly is attached.” E.g., Ex. 1001, 77:29–33.
`Because of this, on the current record, we agree with Patent Owner (Prelim.
`Resp. 29–30) that Petitioner’s proposed constructions are overbroad. Patent
`Owner’s proposed constructions, however, define “yaw” and “roll” from the
`frame of reference of the vehicle as a whole. See Prelim. Resp. 27–29. It is
`unclear to us, based on the current record, whether the “yaw” and “roll” with
`respect to the vehicle as a whole is the same as the “yaw” and “roll” with
`respect to “the exterior portion of the equipped vehicle at which said exterior
`rearview mirror assembly is attached,” as recited in the applicable claims.
`We invite the parties to address this issue further during the trial.
`3. “rearward field of view” (claims 1, 15, and 26)
`Patent Owner asks that we construe the term “rearward field of view”
`to mean a “view of rearwardly approaching or following vehicles.”
`Prelim. Resp. 22. Petitioner does not offer a construction of this term. See
`generally Pet. We find Patent Owner’s proposed construction to be
`sufficiently supported by the intrinsic and extrinsic evidence (Prelim. Resp.
`22–27 (citing Ex. 1001, 51:50–56; Ex. 2001 ¶¶ 109–116; Ex. 1002 ¶¶ 38–
`40)), and we adopt it for purposes of this decision.
`We find it unnecessary to further explicitly construe the challenged
`claims at this stage of the proceeding. See Vivid Techs., 200 F.3d at 803.
`We address some of the additional disputed terms below in the context of
`Petitioner’s challenges, and we invite the parties to further address the
`proper construction of the challenged claims during the trial.
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`D. Asserted Obviousness over Lupo
`1. Overview of Lupo (Ex. 1003)
`Lupo describes “a lateral rear-view mirror for a vehicle, and
`particularly to a mirror having mechanisms for adjusting its orientation
`which can be operated by electric motors.” Ex. 1003, 1:3–6. Figure 1 of
`Lupo is reproduced below.
`
`
`Figure 1 is a partially-sectioned plan view, from above, of Lupo’s rear-view
`mirror. Ex. 1003, 3:16–18. The bottom of Figure 1 shows “a reflective
`plate 4 fixed to the [rear-view mirror’s] body 3 in a frontal aperture 5.”
`Id. at 4:6–9. Further, as shown on the right-hand portion of Figure 1, Lupo’s
`rear-view mirror includes support 2 which “is adapted to be fixed to a side
`portion of the motor-vehicle bodywork.” Id. at 4:4–6.
`In Lupo, body 3 of the rear-view mirror “houses a drive assembly
`6 . . . which can adjust the orientation of the body 3 . . . relative to the
`support bracket 2.” Id. at 4:11–12. In particular, drive assembly 6 adjusts
`orientation of mirror body 3 by “relative rotations about a first, substantially-
`vertical axis A,” shown on the right-hand side of Figure 1 with a double-
`ended, semi-circular arrow, “and a second substantially-horizontal axis B
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`parallel to the plane of the plate 4,” shown in the center of Figure 1, with a
`double-ended, circular arrow. Id. at 4:11–16.
`Adjusting the orientation of mirror body 3 via drive assembly 6 also
`adjusts the orientation of reflective plate 4. Id. at 4:11–13. A portion of the
`drive assembly 6 connects to appendages 52; appendages 52 are connected
`to projections 53 within mirror body 3; and mirror body 3 is fixed to
`reflective plate 4. Id. at 7:16–23; see id. at Fig. 2. As such, adjusting the
`orientation of mirror body 3 by drive assembly 6 also adjusts the orientation
`of reflective plate 4.
`2. Analysis
`Petitioner contends claims 1, 3, 5–13, and 15 are unpatentable as
`obvious over Lupo. Pet. 11–33. We have reviewed the information
`provided by Petitioner, including the relevant portions of the supporting
`McLellan Declaration (Ex. 1002), and are persuaded, based on the current
`record, that Petitioner has demonstrated a reasonable likelihood of prevailing
`on at least one claim for this obviousness challenge. Specifically, we
`determine Petitioner has demonstrated a reasonable likelihood of prevailing
`as to at least independent claims 1 and 15 for this challenge. 35 U.S.C.
`§ 314(a); SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). To
`provide the parties with additional information that may be useful during the
`trial, we also address specific arguments related to certain challenged
`dependent claims below.
`a.
`Claims 1 and 15
`Claim 1 recites an “an exterior rearview mirror assembly configured
`for mounting at an exterior portion of a vehicle, said exterior rearview mirror
`assembly comprising.” Ex. 1001, 76:38–40. Petitioner contends the
`preamble is non-limiting and, in any case, Lupo teaches this limitation by
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`disclosing “an external rear-view mirror for a motor vehicle” that includes
`support bracket 2 adapted to be fixed to a side portion of the vehicle
`bodywork. Pet. 11–12 (citing Ex. 1003, code (57), Fig. 1; Ex. 1002 ¶¶ 72–
`73).
`Claim 1 further recites “a mirror head.” Ex. 1001, 76:41. Petitioner
`contends Lupo’s hollow outer body 3 and projections 53 teach this
`limitation. Pet. 12–13 (citing Ex. 1003, 4:4–9, 7:17–24, Fig. 1; Ex. 1002
`¶¶ 74–75).
`Claim 1 also recites “an exterior mirror reflective element fixedly
`attached at said mirror head.” Ex. 1001, 76:42–43. Petitioner contends
`Lupo’s reflective plate 4 teaches this limitation. Pet. 13 (citing Ex. 1003,
`4:4–9, Fig. 1; Ex. 1002 ¶¶ 76–77). Patent Owner contends Lupo does not
`teach this limitation based on its proposed construction of this limitation.
`Prelim. Resp. 30–32. Because we do not adopt that construction at this
`stage of the proceeding as discussed above, we do not find Patent Owner’s
`argument persuasive.
`Claim 1 further recites “an attachment portion configured for
`attachment at an exterior portion of a vehicle equipped with said exterior
`rearview mirror assembly.” Ex. 1001, 76:44–46. Petitioner contends
`Lupo’s support bracket 2 teaches this limitation. Pet. 14 (citing Ex. 1003,
`4:4–9, Fig. 1; Ex. 1002 ¶¶ 78–79).
`Claim 1 also recites “a multi-axis adjustment mechanism comprising
`at least one electrically-operable actuator.” Ex. 1001, 76:47–48. Petitioner
`contends Lupo teaches “a multi-axis adjustment mechanism (drive assembly
`6) comprising at least one electrically-operable actuator (motors 14, 55).”
`Pet. 15–16 (citing Ex. 1003, 4:11–16, 4:19–22, 4:25–5:2, 7:25–29, Figs. 1–
`3; Ex. 1002 ¶¶ 80–83).
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`Patent 10,261,648 B2
`Claim 1 further recites “wherein said multi-axis adjustment
`mechanism is operable to move said mirror head, with said exterior mirror
`reflective element fixedly attached thereto, about multiple axes relative to
`said attachment portion.” Ex. 1001, 76:49–52. Petitioner contends Lupo
`teaches this limitation. Pet. 17 (citing Ex. 1003, 4:11–16; Ex. 1002 ¶¶ 84–
`85). Specifically, Petitioner contends “Lupo teaches that a multi-axis
`adjustment mechanism (drive assembly 6) is operable to move said mirror
`head (body 3, projections 53) with a mirror reflective element (reflective
`plate 4) fixedly attached thereto, about multiple axes (axis A and axis B)
`relative to said attachment portion (bracket 2).” Id.
`Claim 1 also recites
`wherein said exterior mirror reflective element moves in
`tandem with movement of said mirror head relative to the
`exterior portion of the body of the equipped vehicle at which said
`exterior rearview mirror assembly is attached to adjust the
`rearward field of view of a driver of the equipped vehicle who
`views said exterior mirror reflective element when operating the
`equipped vehicle.
`Ex. 1001, 76:53–60. Petitioner contends that because Lupo’s reflective plate
`4 is fixedly attached to body 3 by frontal aperture 5, reflective plate 4 moves
`in tandem with body 3. Pet. 17–18 (citing Ex. 1003, 4:4–9). Petitioner
`further contends it would have been obvious to a person of ordinary skill in
`the art that “operating the mirror assembly disclosed in Lupo as described
`therein would result in adjusting the rearward field of view of the driver.”
`Id. at 18–19 (citing Ex. 1001, 9:19–21; Ex. 1002 ¶¶ 86–92, 69–71, 40).
`Petitioner supports its contentions as to claim 1 with annotated
`drawings as well as the testimony of Mr. McLellan (Ex. 1002). Pet. 11–19.
`Petitioner relies on similar contentions for independent claim 15. Id. at 32–
`33. Other than the claim construction issue discussed above, Patent Owner
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`Patent 10,261,648 B2
`does not address Petitioner’s contentions that independent claims 1 and 15
`would have been obvious over Lupo. See Prelim. Resp. 30–32. We find
`Petitioner’s showing as to claims 1 and 15 sufficient to support a reasonable
`likelihood of success.
`b.
`Dependent claims 3 and 5–13
`We find Petitioner’s showing as to claims 1 and 15 on this ground
`sufficient to institute trial in this proceeding. Nevertheless, we address
`Petitioner’s contentions for certain dependent claims to provide the parties
`with further information.
`claim 3
`Claim 3 depends from claim 1 and recites “said mirror head comprises
`a bracket to which said exterior mirror reflective element is fixedly
`attached.”2 Ex. 1001, 76:65–67. Figure 1 of Lupo as annotated by
`Petitioner is reproduced below.
`
`
`2 Claims 4, 6, 7, 17, 18, 21, 22, 29, 30, and 32 (challenged over Lupo or
`Lupo in combination with additional references) recite a similar limitation.
`Our analysis above as to Lupo applies to the similar limitation in these
`claims.
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`Pet. 20 (reproducing Ex. 1003, Fig. 1 with annotations and coloring).
`Annotated Figure 1 shows a partially sectioned plan view from above of
`Lupo’s rear-view mirror. Ex. 1003, 3:16–18. Petitioner contends “[t]he
`projections 53 act as a bracket by securely fixing the outer body 3 to the
`appendages 52 of the second movable support 51 with screws 54.” Pet. 20.
`Petitioner then states “Lupo teaches wherein said mirror head (hollow outer
`body 3, projections 53) comprises a bracket (projections 53) to which said
`exterior mirror reflective element (reflective plate 4) is fixedly attached.” Id.
`(citing Ex. 1002 ¶¶ 93–95). In reaching this conclusion, Petitioner relies on
`its proposed construction of “fixedly attached,” stating “[a]s explained
`above, ‘fixedly attached’ should be construed to encompass direct or indirect
`attachment. This construction is supported by Fig. 56 of the ’648 patent,
`which discloses a reflective element (612) fixedly, and indirectly, attached to
`a bracket (616) via the mirror housing (614).” Id. at 20 n.1.
`We have serio