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
`
`
`
`
`Supplemental Declaration of Michael Nranian in Support of
`Patent Owner Magna Mirrors of America, Inc.
`
`
`
`
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`Magna - IPR2020-00777 - Ex. 2010 - 001
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`
`
`
`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
`
`
`
`
`Supplemental Declaration of Michael Nranian in Support of
`Patent Owner Magna Mirrors of America, Inc.
`
`
`
`
`
`
`
`
`
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`Magna - IPR2020-00777 - Ex. 2010 - 001
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`IPR2020-00777
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`Patent No. 10,261,648
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Claim Construction: “Exterior Mirror Reflective Element Fixedly
`Attached At Said Mirror Head” ....................................................................... 1
`
`III. Claim Construction: “Yaw” And “Roll” ........................................................ 2
`
`IV. Lupo Does Not Disclose The First And Second Actuators Are
`“Cooperatively Operable To Adjust Said Mirror Head” (Claims 12,
`27) .................................................................................................................... 6
`
`V. McCabe Does Not Disclose “Wherein The Outermost Front Perimeter
`Edge Of Said Exterior Mirror Reflective Element Is Rounded”
`(Claims 2, 16, 33) ............................................................................................ 7
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`
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`i
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`I.
`
`Introduction
`
`
`
`Patent No. 10,261,648
`
`1.
`
`I previously provided a declaration in support of support of Patent
`
`Owner, Magna Mirrors of America, Inc. (“Magna”), regarding Motherson
`
`Innovations Co., Ltd.’s (“Motherson”) Petition for Inter Partes Review of U.S.
`
`Patent No. 10,261,648 (“the ’648 Patent”). My prior declaration is of record in the
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`present proceeding, IPR2020-00777, as Exhibit 2001.
`
`2.
`
`Since my prior declaration, the Patent Trial and Appeal Board
`
`(“Board”) issued its Decision Granting Institution of Inter Partes Review of the
`
`‘648 Patent (Paper No. 7). I have reviewed the Institution Decision, and provide
`
`additional opinions in view of the Institution Decision.
`
`3. My background and qualifications are set forth in Exhibits 2001 and
`
`2002.
`
`4.
`
`All statements herein made of my own knowledge are true, and all
`
`statements herein that are based on information and belief are believed to be true. I
`
`am over 21 years of age and am competent to make this declaration.
`
`II. Claim Construction: “Exterior Mirror Reflective Element Fixedly
`Attached At Said Mirror Head”
`
`5.
`
`In its Institution Decision, the Board did not preliminarily adopt
`
`Patent Owner’s construction for “exterior mirror reflective element attached at said
`
`mirror head. Paper No. 7 at 12–14. As part of its reasoning, the Board stated that
`
`“the description in the ‘648 specification does not make a distinction between a
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`1
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`configuration with the mirror reflective element attached at the peripheral exterior
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`surface of the mirror head, and a configuration where the mirror reflective element
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`is attached inward from that surface of the mirror head.” Paper No. 7 at 13.
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`6.
`
`I respectfully disagree with the Board’s characterization of the ‘648
`
`specification, and submit that the ‘648 specification does indeed make such a
`
`distinction for the reasons set forth in my prior declaration (Ex. 2001) at
`
`paragraphs 78–87. For the same reasons provided in those paragraphs of my
`
`earlier declaration, it is my opinion that one of skill in the art reading the ‘648
`
`patent would consider the patent to be making a material distinction between: (i)
`
`the claimed configuration in which the mirror reflective element is attached at the
`
`peripheral exterior surface of the mirror head, and (ii) the prior art configuration
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`where the mirror reflective element is attached inward from the surface of the
`
`mirror head.
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`III. Claim Construction: “Yaw” And “Roll”
`
`7.
`
`In my prior declaration, I provide my opinion on the ordinary meaning
`
`of the terms “yaw” and “roll” to one of skill in the art when reading the ‘648
`
`patent. See Ex. 2001 at ¶¶ 117–126. I also explain why Petitioner’s proposed
`
`constructions do not accurately capture the term’s ordinary meaning, particularly
`
`because the Petitioner’s construction allows the yaw and roll axes to be defined in
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`2
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`ways that are contrary to how one of ordinary skill in the art would understand
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`them. Id. at ¶ 127.
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`8.
`
`In the Institution Decision, the Board “agree[d] with Patent Owner
`
`(Prelim. Resp. 29–30) that Petitioner’s proposed constructions are overbroad.”
`
`Paper No. 7 at 15.
`
` The Board noted that “Patent Owner’s proposed
`
`constructions…define ‘yaw’ and ‘roll’ from the frame of reference of the vehicle
`
`as a whole.” Id. It also observed that the claims “recite a frame of reference for
`
`the yaw and roll adjustment” as “relative to the exterior portion of the equipped
`
`vehicle at which said exterior rearview mirror assembly is attached.” Id. at 14–15.
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`The Board further stated that “[i]t is unclear. . .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.” Id. at 15. The Board
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`“invite[d] the parties to address this issue further during the trial.”
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`9.
`
`It is my opinion that one of skill in the art would understand the frame
`
`of reference identified in the claims themselves further supports Patent Owner’s
`
`constructions. As set forth below, if anything, the frame of reference set forth in
`
`the claims does not change the ordinary direction of the pitch, yaw, and roll
`
`coordinates known to one of skill in the art. If anything, it shifts that coordinate
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`system from the center of the vehicle (the vehicle as whole), to the side of the
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`vehicle (the exterior portion of the equipped vehicle at which said exterior
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`rearview mirror assembly is attached). This shift in the frame of reference in view
`
`of the claim language is shown in the image below:
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`
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`As shown above, the primary axis, the roll axis, shifts from the middle of the
`
`vehicle to the side of the vehicle where the driver’s side exterior mirror is
`
`equipped. The axis could shift to the passenger side exterior portion of the vehicle
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`as well. In either case, the direction of the roll axis remains the same. Also,
`
`although not drawn above, the yaw axis would shift from the middle of the vehicle
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`to the side, but its orientation and direction would not change. The same is true for
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`the pitch axis; its orientation and direction would not change, but it would intersect
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`with the roll and yaw axes at the side of the vehicle, not at the center of the vehicle.
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`10. My opinion follows from the fact that the claim language defines the
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`primary axis about which the adjustments occur: “the exterior portion of the
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`equipped vehicle at which said exterior rearview mirror assembly is attached.”
`
`This primary axis is consistent with the roll axis in the direction of travel of the
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`vehicle, i.e., from back to front. As I described above, this language in the claims
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`suggests a shift of the origin of the coordinate system from the center of the vehicle
`
`to the side of the vehicle. It does not suggest making a change to the orientation of
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`the well-known coordinate system of yaw, pitch, and roll axes in vehicles.
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`11. Given the well-established understanding of “yaw,” “pitch,” and
`
`“roll” in the automotive industry, I would expect an explicit re-orientation of these
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`axes if the inventors of the ‘648 Patent intended such a re-orientation, as suggested
`
`by Petitioner. However, nothing in the ‘648 Patent suggests (explicitly or
`
`implicitly) such a re-orientation. Thus, because the ‘648 Patent uses the terms
`
`“yaw,” “pitch,” and “roll” according to their plain and ordinary meaning, it is my
`
`belief that these terms should be construed as such. I note that Petitioner’s expert
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`and the Petition itself acknowledge these terms are being used according to their
`
`ordinary meaning to one of skill in the art. See Ex. 1002 at ¶ 50 (Petitioner’s
`
`expert’s stating it is his “opinion that these claim elements are given their plain and
`
`ordinary meaning as understood by a person having ordinary skill in the art”); see
`
`Petition at 6 (stating “the specification does specifically define yaw and roll”).
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`12. Further, the claims make clear that the adjustment is of the mirror
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`reflective element relative to the body of the vehicle. The claims simply define the
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`anchor point of the adjustment, and, thus, the origin of the yaw, pitch, and roll
`
`coordinate system, as the “exterior portion of the equipped vehicle at which said
`
`exterior rearview mirror assembly is attached.” Ex. 1001, cl.9; see also id. at
`
`cls.25, 31, 36.
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`13. Additionally, the mirror reflective element described in the ‘648
`
`Patent is to be viewed by the driver of the vehicle, and the primary view of the
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`driver is straight ahead on the road being driven. One of skill in the art would not
`
`look to the axis of the mirror assembly in isolation to define the “main axis.”
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`14. Thus, even if one were to use Petitioner’s proposed construction, the
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`“main axis” would still be the primary axis of the vehicle as a whole, i.e., from the
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`back to the front of the vehicle. This would then result in “roll” being the same as
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`Patent Owner’s construction, i.e., the well-understood meaning of “roll”: the
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`longitudinal axis in the direction of travel from the rear of the vehicle to the front
`
`of the vehicle. Likewise, “yaw” and “pitch” would be the same as Patent Owner’s
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`construction and the well-understood meanings of these terms.
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`IV. Lupo Does Not Disclose The First And Second Actuators Are
`“Cooperatively Operable To Adjust Said Mirror Head” (Claims 12, 27)
`
`15. Claims 12 and 27 require that the first and second actuators are
`
`“cooperatively operable to adjust said mirror head.” In Lupo, the motors 14 and 15
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`are used to adjust the mirror head. However, Lupo is silent as to whether the two
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`motors could be used cooperatively, i.e., at the same time, or separately. It is
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`certainly possible, however, that motors 14 and 15 only work separately, not
`
`cooperatively. For example, it could be that button 81 is used to operate one
`
`motor, but button 82 does not work while button 81 is being used, and vice versa.
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`Nothing in Lupo states or implies that such separate operation is unavailable.
`
`V. McCabe Does Not Disclose “Wherein The Outermost Front Perimeter
`Edge Of Said Exterior Mirror Reflective Element Is Rounded” (Claims
`2, 16, 33)
`
`16.
`
`In my prior declaration, I opined on the meaning of the term
`
`“rounded” to one of skill in the art in the context of the ‘648 patent, how McCabe
`
`fails to disclose this feature, and why there is no motivation to combine McCabe
`
`with Lupo or Tsuyama. See Ex. 2001 at ¶¶ 97–108 and ¶¶ 209–216. Because I
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`respectfully disagree with the Board’s position that “McCabe discloses a rounded
`
`edge” as claimed in the ‘648 patent, I provide additional opinions as follows. See
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`Paper No. 7 at 33.
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`17. There is a fundamental difference between a glass edge that is
`
`finished by seaming as in McCabe and a glass edge that is rounded as set forth and
`
`claimed in the ‘648 patent. Seaming an edge of a glass element is done to protect
`
`the person who is handling the cut glass during assembly/manufacture of the
`
`mirror element. For example, as described in Figure 51 of McCabe (reproduced
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`below), a worker picking up a glass rear shape at step 702 to place into a fixture at
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`step 710 could have his/her hands lacerated but for the seaming (pencil seaming or
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`rounding) at step 706.
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`
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`Ex. 1004, Figure 51. One of skill in the art knows that this finishing step, 706, is
`
`necessary as a safety measure when dealing with all types of cut glass in the
`
`automotive context. This finishing step also eliminates unwanted chipping that
`
`may occur on an unfinished edge of cut glass.
`
`18.
`
`In McCabe, the word rounded appears in the context of this type of
`
`finishing of cut glass for the purposes of safety handling and avoiding unwanted
`
`chipping. Ex. 1004 at 46:23-33. It states: “it may be desirable to finish or seam
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`the edges of the substrates or cell, such as via belt seaming or the like, to buff out
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`any chips, since any edge chips that may be present may be visible or discernible at
`
`the reflective perimeter band area of the reflective element assembly. Optionally,
`
`the front substrate (either before or after the mating with the rear substrate) may
`
`have its perimeter edges seamed or finished (such as pencil seamed or rounded) so
`
`that there is a radius and not a sharp edge at the outer perimeter of the reflective
`
`element assembly.” Id. One of skill would consider this disclosure of rounding to
`
`be the type of finishing that would occur for purposes of protecting workers during
`
`manufacturing and handling of cut glass.
`
`19. By contrast, the rounding disclosed in the ‘648 patent (and as claimed
`
`in claims 2, 16 and 33) is done because, with the exterior mirror reflective element
`
`fixedly attached to the peripheral exterior surface portion of the mirror head, in
`
`some constructions the outermost front perimeter glass edge of the mirror
`
`reflective element can be exposed, and an exposed sharp edge would be dangerous
`
`to a vehicle’s occupants or to any one struck by or striking the exterior rearview
`
`mirror assembly in an accident. As set forth in my prior declaration, this type of
`
`rounding must meet safety regulations. If a seamed edge of a mirror, such as that
`
`in McCabe, were exposed as part of an exterior mirror assembly, such a
`
`configuration would not satisfy those safety standards, and would be dangerous to
`
`occupants of the vehicle during an accident. Edges that were finished to provide a
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`measure of safety for purposes of handling and manufacture would not be
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`considered sufficiently rounded to be safe to use as an exposed edge in a vehicle.
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`Thus, a person of ordinary skill in the art would not look to the seaming of
`
`McCabe to arrive at the rounding of the ‘648 patent, and even if one of skill in the
`
`art did make such a combination, it would not result in the rounding claimed in the
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`‘648 patent.
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`20. Specifically, the outermost perimeter edge of the front glass substrate
`
`of the mirror reflective element depicted in Figure 41 of McCabe (reproduced
`
`below) would have been seamed (such as at step 708 of the process shown in Fig.
`
`51) prior to assembly of reflective element assembly 610’.
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`Ex. 1004, Figure 41. However, the edge of the mirror reflective element in
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`McCabe would not have been rounded to the degree as required by the claims of
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`the ‘648 patent.
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`21. The outermost perimeter edge of front glass substrate 412 of reflective
`
`element assembly 411 shown in Figure 29 of McCabe (reproduced below) would
`
`have been seamed, but would still require the protective bezel shown in Figure 29
`
`in order to protect a person from being cut or otherwise injured by the sharp
`
`seamed glass edge.
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`Ex. 1004, Figure 29.
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`
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`22. Thus, even if one of skill in the art were to combine McCabe with
`
`Lupo, they would not arrive at the claimed invention. The seamed glass edge of
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`McCabe would be too sharp to be left exposed, and would have to be protected by
`
`a bezel. Thus, Figure 29 of McCabe illustrates what one of skill in the art would
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`arrive at if combining McCabe and Lupo. Figure 29 of McCabe, however, is
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`fundamentally different than the rounded, exposed edge of the ‘648 patent, shown
`
`in Figure 30. As the comparison below shows, using McCabe would require a
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`protective bezel, and even the seamed (rounded) edge in McCabe would not satisfy
`
`the requirement that the edge be “rounded” as disclosed and claimed in the ‘648
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`patent.
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`23. Further support for construing the term “rounded” in the ‘648 claims
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`as requiring a minimum radius of curvature of 2.5 mm is found in WO
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`2011/044312, which the ‘648 patent incorporates by reference in its entirety at Ex.
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`1001, 28:51-60 and 33:51-64. The WO ‘312 application discloses and discusses
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`that its frameless, exposed mirror element is rounded with a radius of curvature of
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`at least 2.5 mm for safety purposes. It states: “it is desired to have at least a 2.5
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`mm radius of curvature at the perimeter edges of a mirror assembly (typically at a
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`bezel of a conventional mirror assembly) to meet the minimum safety standards for
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`head impact with the mirror, such as during a sudden stop or collision of the
`equipped vehicle.” Ex. 2011 at 8-9. Throughout the WO ‘312 application, it refers
`
`to a radius of curvature of “at least” 2.5 mm,or onethatis “greater than or equal to
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`about 2.5 mm.”
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`Jd. at 2, 8, 17, 18, 19, 21, 25, 27, 30, 31. The WO ‘312
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`application further states that it provides an “edge of the front substrate of the
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`mirror having on its perimeter a radius of curvature greater than or equal to 2.5
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`mm (such as 3 mm orthereabouts) at all points and in all directions, and thus the
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`mirror assembly satisfies the requirements of ECE Regulation No. 46.” Id. at 21,
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`25,215.90, 31.
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`24. All statements made herein of my own knowledgeare true, and all
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`statements made on information and belief are believed to be true. Further, I am
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`aware that these statements are made with the knowledge that willful false
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`statements and the like so made ‘are punishable by fine or imprisonment, or both,
`under 18 U.S.C. § 1061.°¥declare‘riderpenalty of perjury that the foregoing is
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`true andcorrect. ==> S22 =
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`Dated: January3,2021
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`~~. .-——s
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`By: Phar
`Michael Nranian,
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`P.E.
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`bee FE
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`13
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