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 Sur-Reply
`
`
`
`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 Sur-Reply
`
`
`
`IPR2020-00777
`
`Patent No. 10,261,648
`
`TABLE OF CONTENTS
`
`B.
`
`C.
`
`Page
`Table of Authorities .................................................................................................. ii
`LIST OF EXHIBITS ................................................................................................ iii
`I.
`Petitioner Fails To Satisfy Its Burden of Proving Unpatentability Of
`The Challenged Claims ................................................................................... 1
`A.
`Neither Lupo Nor Tsuyama Discloses “An Exterior Mirror
`Reflective Element Fixedly Attached At Said Mirror Head” ............... 1
`Lupo Does Not Disclose “A Bracket To Which Said Exterior
`Mirror Reflective Element Is Fixedly Attached” .................................. 5
`The Combination Of Lupo And Tsuyama Does Not Render
`Obvious The Limitations of Claim 4 .................................................. 12
`D. McCabe Does Not Disclose “Rounded” ............................................. 14
`E.
`Lupo Does Not Disclose “Roll Adjustment”; Tsuyama Does
`Not Disclose “Yaw Adjustment” ........................................................ 16
`Lupo Does Not Disclose First And Second Actuators That Are
`“Cooperatively Operable” ................................................................... 21
`Tsuyama Is Not An “Exterior Rearview Mirror Assembly”............... 23
`G.
`Conclusion ..................................................................................................... 26
`II.
`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24 ............................. 28
`CERTIFICATE OF SERVICE ................................................................................ 29
`
`F.
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`i
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`IPR2020-00777
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`Patent No. 10,261,648
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`TABLE OF AUTHORITIES
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` Page(s)
`
`CASES
`In re Hayes Microcomputer Prods., Inc.,
`982 F.2d 1527 (Fed. Cir. 1992) ............................................................................ 9
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 22, 24
`Laserfacturing, Inc. v. Old Carco Liquidation Trust,
`494 Fed.Appx. 72, 2012 WL 4054135 (Fed. Cir. 2012) ...................................... 3
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................ 3, 6
`QDS Injection Molding, L.L.C. v. United Maxon, Inc.,
`No. SACV 09-1412 DOC RNB, 2011 WL 1706512 (C.D. Cal.
`2011) ..................................................................................................................... 7
`STATUTES
`35 U.S.C. § 113 .......................................................................................................... 9
`35 U.S.C. § 312(a)(3) ......................................................................................... 22, 24
`MISCELLANEOUS
`37 C.F.R. § 42.23(b) .......................................................................................... 22, 24
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`ii
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`Patent No. 10,261,648
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`LIST OF EXHIBITS
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`Exhibit
`2001
`
`Description
`Declaration of Michael Nranian
`
`2002
`
`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
`
`2011
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`2012
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`2013
`
`2014
`
`2015
`
`Curriculum Vitae of Michael Nranian
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`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
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`What is a Seamed Edge and Why is it Important
`
`First Supplemental Declaration of Michael Nranian
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`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
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`Patent No. 10,261,648
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`I.
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`Petitioner Fails To Satisfy Its Burden of Proving Unpatentability Of
`The Challenged Claims
`A.
`Neither Lupo Nor Tsuyama Discloses “An Exterior Mirror
`Reflective Element Fixedly Attached At Said Mirror Head”
`Patent Owner’s construction of this phrase derives from what is shown in
`
`Figure 68A as the “present invention.” It also follows from the specification’s
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`discussion of how the “present invention” of Figure 68A improves over the
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`“known construction” of Figure 68B. In view of this disclosure, as expert Nranian
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`testified, Patent Owner’s construction is the plain meaning understanding of the
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`term to one of skill in the art. See Ex. 2001, ¶¶ 77–85.
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`Fig 68A: “present invention”
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`Fig 68B: “known construction”
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`The Petition offered no construction of this phrase, and the Petitioner’s
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`expert did not opine on its meaning to one of ordinary skill in the art. Petitioner’s
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`Reply again offers no construction, and cites to no testimony of one of skill in the
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`art. Nor does Petitioner cite to any testimony rebutting Nranian’s evidence of the
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`meaning to one of ordinary skill in the art. Moreover, Petitioner’s Reply ignores
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`the distinction between the “present invention” construction of Figure 68A and the
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`“known construction” of Figure 68B. Patent Owner’s evidence—the testimony of
`
`Nranian—is the only evidence of record on the meaning of this term to one of skill
`
`in the art.
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`Instead of evidence, Petitioner makes various attorney-based arguments
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`against Patent Owner’s plain meaning construction. None has merit.
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`First, Petitioner points to Figure 40 and its use of a “bezel or cover element”
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`as contradicting Patent Owner’s proposed construction. Paper No. 13 (hereinafter
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`“Reply”), 2. It does not. Whether a bezel covers a portion of the mirror reflective
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`element is separate from how the reflective element is attached to the mirror head.
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`Figure 40 does not purport to show the mirror head, let alone how the reflective
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`element is attached to it—making Petitioner’s reliance on Figure 40 misplaced for
`
`understanding the meaning of this claim phrase. Moreover, the specification
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`describes the “bezel or cover element 377” as a separate, stand-alone piece that can
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`be “attach[ed]” to the “mirror casing.” Ex. 1001, 36:23–47. It is not described as a
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`portion of the mirror head, as Petitioner wrongly suggests. Id.
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`Moreover, as expert Nranian explained, the claims are set off by the term
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`“comprising,” meaning that the inclusion of an additional element (bezel) does not
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`avoid the claims. Ex. 1020, 45:3–46:6.
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`Petitioner’s argument also ignores the difference between claim 2, which
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`recites a “rounded” mirror reflective element edge, and claim 1, which does not.
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`Because of claim differentiation, claim 1 necessarily covers both rounded and non-
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`rounded edges. One of skill in the art would know that a non-rounded exposed
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`edge would be unsafe but for the use of a protective element. Ex. 2010, ¶¶ 21–22.
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`Second, Petitioner generically contends that Patent Owner’s proposed
`
`construction “read[s] in [a] limitation.” Reply, 2. But giving terms their plain
`
`meaning to one of skill in the art reading the ‘648 patent is what Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), commands. That is not reading
`
`in a limitation. See, e.g., Laserfacturing, Inc. v. Old Carco Liquidation Trust, 494
`
`Fed.Appx. 72, 2012 WL 4054135 (Fed. Cir. 2012) (construing “sheet” as a “broad
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`thin piece of material with generally uniform thickness” because it was the plain
`
`meaning and how the specification used the term).
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`Third, Petitioner baldy asserts that expert Nranian’s testimony is not
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`“credible.” Reply, 3. Petitioner contends that Nranian supposedly said that he
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`construed the claims with reference to the “prior art” or to a “product.” Id. But
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`Petitioner misquotes and mischaracterizes the exchange. Nranian actually
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`testified: “you look at…the claim terms, the specification, the prosecution history,
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`and the extrinsic evidence in that order…to interpret what these claim terms
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`means.” Ex. 1020, 101:22–102:18. Only then do you “look at a product
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`specifically or…at a piece of prior art” to determine whether “you’ve either
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`infringed or it’s invalid.” Id. That is precisely the standard Nranian applies in his
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`declaration. Ex. 2020, ¶¶ 42–45, 76–88; Ex. 1020, 22:3–25 (testifying that he
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`applied “legal standards” “provided…by counsel”).
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`Making matters worse, in the snippet that Petitioner misquotes, it fails to
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`mention that Nranian was answering questions about infringement and applying
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`the claim terms to a hypothetical product. Id., 103:13–15 (“Q. So if a product has
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`[various characteristics], can that product meet claim 1?”); id., 103:22–23; id.,
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`104:11–13 (“Q. …This product I’m talking about meets every limitation of claim
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`1.”). Petitioner also omits that, in direct response to the question, “So in order to
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`tell me what the claim term means, you have to do an infringement analysis, that’s
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`what you’re saying,” Nranian replied: “No, that’s not what I’m saying.” Id.,
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`105:3–13. Petitioner’s attempt to discredit Nranian’s testimony is without merit.
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`Accordingly, Patent Owner’s construction should be adopted, and because
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`Petitioner offers no argument of unpatentability under Patent Owner’s construction
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`(indeed, offers no construction at all for the subject claim element), all of its
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`grounds fail.
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`B.
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`Lupo Does Not Disclose “A Bracket To Which Said Exterior
`Mirror Reflective Element Is Fixedly Attached”
`The Petition sought to construe the term “fixedly attached” to mean “direct
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`and indirect attachment” on the basis of extrinsic evidence, without analyzing the
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`intrinsic record or even the specific claim limitations in which the term appeared.
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`Petition, 5–6; Ex. 1002, 21–22. The error of that construction was evident in
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`Petitioner’s attempt to read Lupo on the limitation “a bracket to which said exterior
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`mirror reflective element is fixedly attached.” Petitioner points to “projections 53”
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`as the alleged “bracket,” and argues that those projections are “fixedly attached” to
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`the reflective plate 4, shown below in Petitioner’s annotated version of Figure 1:
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`Reply, 19. This claim interpretation and mapping is, as the Board observed, “a
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`bridge too far.” Paper No. 7, 22.
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`In reply, Petitioner now argues the term “fixedly” means “placed so as to be
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`firm and not readily movable,” citing Exhibits 1013 and 1014, the same dictionary
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`definitions it offered with the Petition. Reply, 4. This new extrinsic-evidence-
`
`based construction
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`is not substantively different
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`than Petitioner’s
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`initial
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`construction, and is just as untenable.1
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`Most importantly, Petitioner’s approach—relying on extrinsic evidence
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`“divorced from the intrinsic evidence”—was soundly rejected by Phillips. 415
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`F.3d at 1319–1324. “The main problem with elevating the dictionary” in the way
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`Petitioner does is it “risks transforming the meaning of the claim term to the artisan
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`to the meaning of the term in the abstract, out of its particular context, which is the
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`specification.” Id. at 1321. That is precisely the case here.
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`Not surprisingly then, Petitioner’s dictionary-based construction runs
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`contrary to the intrinsic evidence. First, the words of the claims themselves
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`contradict Petitioner’s broad interpretation. Claim 3 provides “a bracket to which
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`said exterior mirror reflective element is fixedly attached.” Those words make
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`clear the direct nature of the attachment and are inconsistent with an indirect
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`attachment. While conceptually, the word “attach” may in certain circumstances
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`1 Petitioner suggests this new construction is more limited than its initial
`construction, but that is not so. Id. The wheel of a vehicle is still “fixedly
`attached” to the mirror reflective element under Petitioner’s new construction just
`as it was under Petitioner’s initial construction. As the vehicle moves, both
`elements move together.
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`convey indirect attachment, in the context of claim 4, that conceptual reading is
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`unsupportable.2
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`Claim 4 further recites that the bracket is attached to the exterior mirror
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`reflective element “by use of an adhesive.” As the Board pointed out, this claim
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`language and the corresponding discussion in the specification requires a direct
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`adhesive attachment. Paper No. 7, 22–23. But Petitioner’s Reply ignores claim 4
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`and the concerns the Board raised regarding it.
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`Similarly, Petitioner’s Reply ignores the many cases (cited in the POR)
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`finding a claimed attachment only covers direct attachment, not indirect. See, e.g.,
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`QDS Injection Molding, L.L.C. v. United Maxon, Inc., No. SACV 09-1412 DOC
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`RNB, 2011 WL 1706512, *3–*7 (C.D. Cal. 2011) (finding that the “reference to
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`glue” “indicates” that the two pieces are “attached directly to one another”).
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`Further, the disclosed embodiments support Patent Owner’s construction,
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`not Petitioner’s. Although Petitioner repeats its contention that Figure 56 supports
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`its broad construction, it merely advances the same flawed reasoning as before.
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`Petitioner offers nothing to overcome the Board’s “serious doubts” about
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`Petitioner’s interpretation of Figure 56, or the Board’s observation “that Figure 56
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`2 For the same reason, Petitioner’s reliance on expert Nranian’s testimony in
`other contexts does not support Petitioner’s construction. Reply at 6. Even if the
`term “attach” could conceptually refer to indirect attachment, it cannot be read so
`broadly in the claims.
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`of the ’648 patent does not appear to support how Petitioner views an indirect
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`attachment.” Paper No. 7, 22.
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`Petitioner argues that element 616 is indirectly attached to element 612
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`through element 614; however, such indirect attachment as conceptualized by
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`Petitioner is not what is claimed. Petitioner relies on the specification’s labelling
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`of element 616 as a “bracket,” but the specification also labels element 620 as a
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`“bracket.” Ex. 1001, 59:12–18. Petitioner has no answer to the fact that element
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`616 is attached to element 614 on the one side and element 618 on the other side,
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`but not at all to the mirror reflective element 612. Moreover, every element shown
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`in Figure 56 “moves in tandem” with reflective element 612, but not every element
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`is the claimed bracket.
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`Petitioner suggests that Patent Owner’s construction would “exclude” Figure
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`56, but that is incorrect. Reply, 6. Figure 56 plainly includes structure that serves
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`as a bracket attaching the reflective element 612 to the mirror head 614, and that
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`structure is element 614a, which attaches the two to each other. Indeed, if the
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`attachment is by use of an adhesive, as claim 4 requires, the bracket must be
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`element 614a.
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`There are other indications that element 616 is not the bracket recited in
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`claim 4. First, element 616 is not a part of the mirror head, as the claim requires; it
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`is a separate piece. See Ex. 1001, 76:65–68 (“wherein said mirror head comprises
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`a bracket”). Second, element 616 does not connect the reflective element 612 to
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`the mirror head housing 614. See id. (“a bracket to which said exterior mirror
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`reflective element is fixedly attached”) (emphasis added). Instead, as can clearly
`
`be seen in Figure 56, the “rear attaching portion 614a” is an intermediate
`
`component for fixing the reflective element 612 to the larger mirror head housing
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`614.
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`Petitioner also incorrectly discounts Figure 68, which indisputably shows
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`bracket 734 attached to reflective element 742. Petitioner (without any testimony
`
`support from its expert) contends Figure 68 is not covered by the claims because it
`
`does not illustrate a mirror head. Reply, 7. But that wrongly assumes that every
`
`figure must disclose every feature of a claim to be relevant to claim construction.
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`There is no such requirement. See 35 U.S.C. § 113 (requiring drawings “where
`
`necessary for the understanding of the subject matter sought to be patented”); In re
`
`Hayes Microcomputer Prods., Inc., 982 F.2d 1527, 1536 (Fed. Cir. 1992) (“the
`
`drawings were sufficient for a skilled artisan to understand the subject matter of the
`
`claimed invention”).
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`Plainly, as Nranian points out, Figure 68 (which is described in the ‘648
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`patent as “a schematic”) is included to illustrate the relationship between various
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`internal elements, including how the bracket is attached to the reflective element.
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`Ex. 1020, 98:7–9 (“look at 68 and 68A and read the whole patent”); see also Ex.
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`1001, 68:51–64 (while describing the embodiment in Figure 68: “Optionally, and
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`desirably, a mirror casing or shell 744 (FIG. 68A) may be readily attached at the
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`mirror attachment element.”). One of skill in the art would understand that the
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`embodiment of Figure 68 is not meant to be the finished, final product, but rather
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`an illustration of certain components ultimately included in such a product. Id.
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`One of skill would know, in view of the rest of the disclosure, that a mirror casing
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`would be used. Id.
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`Petitioner’s other attempt to ignore Figure 68 fails as well. Petitioner asserts
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`that “the Figure 68 embodiment does not adjust the rearward field of view of the
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`driver” because “the driver would not even be able to see the mirror.” Reply, 8–9.
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`But again Figure 68 is offered as an aid to one of skill in the art to understand the
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`construction and the arrangement of certain internal components. For example,
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`although support arm 740 is drawn as a straight line, one of skill in the art would
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`understand that, in practice, the mirror assembly would be supported so as to
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`provide a driver with a rearward field of view. The specification explains:
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`“adjustment of the support arm or structure causes a corresponding tandem
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`adjustment of the attachment element 736 and of the mirror reflective
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`element 742 to adjust the rearward field of view of the driver of the vehicle.” Ex.
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`1001, 68:57–60 (emphasis added).
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` Petitioner’s attorney-based-arguments
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`regarding Figure 68 are thus inconsistent with how one of skill would understand
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`that figure.
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`Patent Owner’s expert Nranian provides the only evidence of how one of
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`skill in the art would understand the intrinsic record. Petitioner’s expert based his
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`construction of “fixedly attached” solely on extrinsic evidence in the declaration
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`supporting the Petition, Ex. 1002 at ¶ 49, and failed to offer any further testimony
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`after the Board identified “serious doubts” with the construction. Paper No. 7, 21.
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`By contrast, Patent Owner’s expert Nranian analyzed the intrinsic evidence and
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`concluded that “one of skill in the art would understand the phrase ‘a bracket to
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`which said exterior mirror reflective element is fixedly attached’ to mean ‘a
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`bracket that is directly attached to said exterior mirror reflective element.’” Ex.
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`2001, ¶ 91. That testimony stands unrebutted, and is the only construction that
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`accounts for the intrinsic evidence.
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`Finally, Petitioner selectively ignores the extrinsic evidence that it
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`affirmatively offered with its Petition. Petitioner’s Exhibit 1011 describes a
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`“bracket” as an “intermediate component for fixing one part to another, usually
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`larger, part.” Ex.1011, 1. “What makes a bracket a bracket is that it is
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`intermediate between the two and fixes the one to the other.” Id. Examples
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`include “the rings that attach pipes to walls” and “the components that attach a
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`bicycle lamp to a bicycle.” Id. Thus, in the context of claims 3 and 4 (for
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`example), the use of the term “bracket”—a direct mechanical attachment of one
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`part to another—undermines Petitioner’s attempt to construe the claims to cover
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`“indirect” attachment.
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`Lupo’s projections 53 are not directly attached to reflective plate 4. Lupo
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`fails to satisfy this limitation of claims 3–4, 6–7, 17–18, 21–22, 29–30, and 32.
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`C.
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`The Combination Of Lupo And Tsuyama Does Not Render
`Obvious The Limitations of Claim 4
`Petitioner’s attempt to read Lupo and Tsuyama on claim 4 fails as well, and
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`further illustrates why Petitioner’s reading of claim 3 is wrong.
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`Claim 4 requires the exterior mirror reflective element to be fixedly attached
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`to the bracket “by use of an adhesive.” Ex. 1001, 77:1–4. Petitioner alleges that
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`“it would have been obvious to a POSA to use the adhesive of Tsuyama to better
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`secure the reflective element 4 in Lupo’s outer body 3.” Reply, 26. In its Reply,
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`Petitioner illustrates this modification as follows:
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`Id., 27 (Petitioner’s annotated version of Ex. 1003, Fig. 1).
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`But Petitioner’s theory would add the “tape” of Tsuyama to the mirror head
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`of Lupo, not to the bracket, as the claims require. Seemingly recognizing this flaw,
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`Petitioner attempts to obfuscate the issue by failing to highlight the projections 53,
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`which it asserts to be the claimed “bracket.” Highlighted or not, it is clear that
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`Petitioner’s obviousness combination adds the tape 20 of Tsuyama to the outer
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`body 3 of Lupo, not to the projections 53. Thus, even if Lupo were modified in
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`this way, the tape 20 would not fixedly attach the reflective plate 4 to the
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`projections 53, as required by claim 4. The tape 20 would simply attach the
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`reflective plate 4 to the outer body 3. But as the Board correctly found, “[t]he ‘648
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`specification, however, does not appear to suggest that an adhesive can encompass
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`the adhesive as well as any components in between the bracket and the mirror
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`reflective element.” Paper No. 7, 22–23; see Ex. 1001, Fig. 26A, 29:66–30:1.
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`Petitioner’s Reply fails to address this dispositive flaw.
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`Accordingly, even if Lupo were to be combined with Tsuyama, such a
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`combination would not meet all the limitations of claim 4.
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`D. McCabe Does Not Disclose “Rounded”
`The term “rounded” in the ‘648 patent has a particular meaning to one of
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`ordinary skill, as explained by expert Nranian. Ex. 2001, ¶ 98. It conveys that the
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`“edge” of the mirror reflective element has a minimum radius of curvature of 2.5
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`mm because in the ‘648 patent the edge is exposed and that degree of curvature is a
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`necessary minimum safety threshold. Id.
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`Petitioner offers no testimony of one of skill in the art about the plain
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`meaning of this term. Its expert McClellan offered no rebuttal to Nranian’s
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`testimony on the plain meaning of “rounded.”
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`Petitioner’s Reply solely offers attorney arguments, but none withstand
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`scrutiny. First, Petitioner contends that the specification’s discussion of a
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`minimum radius of curvature only applies to interior mirrors, not exterior mirrors.
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`Reply, 11. But the ‘648 patent draws no such distinction; instead one of skill in the
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`art knows that the minimum radius of curvature threshold would necessarily apply
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`to any exposed glass edge, interior or exterior. Ex. 2001, ¶¶ 98–108. The ‘648
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`patent also states that “aspects of the [interior] mirror assemblies discussed above
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`may be incorporated in or associated with an exterior rearview mirror assembly.”
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`Ex. 1001, 58:49–52. This minimum safety threshold is plainly one such aspect.
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`Ex. 2010, ¶ 19.
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`Second, Petitioner points out that the ‘648 patent discloses that the mirror
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`edge could be “curved or rounded or beveled,” and argues that “if an edge is
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`beveled, it would not have a radius of curvature at all.” Reply, 12. That misses the
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`mark. These are three different types of edge treatments. However, claim 2 does
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`not recite all three. It solely recites “rounded” edges. The characteristics of a
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`“beveled” edge are therefore irrelevant to understanding the meaning of the
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`claimed “rounded” edge.
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`Finally, Petitioner asserts, “there is simply nothing in the patent that
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`supports” Patent Owner’s construction. That ignores the testimony of Patent
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`Owner’s expert Nranian, who cited and discussed numerous passages of the ‘648
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`patent, that, “[t]aken together” indicate that the claimed rounding must satisfy the
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`minimum safety threshold identified in the patent. Ex. 2001, ¶ 103; id., 97–108.
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`Petitioner does not rebut this testimony.
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`Regarding McCabe, Petitioner contends that McCabe inherently (but not
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`expressly) discloses that its edges are rounded to a minimum radius of curvature of
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`2.5 mm. But Petitioner ignores that McCabe does not disclose a mirror reflective
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`element having an exposed edge in the final mirror assembly. The edge of the
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`mirror reflective element is only exposed during handling and manufacture. As
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`Nranian testified, that is a fundamental difference. Ex. 2010, ¶¶ 16–23. One of
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`skill in the art would know that some degree of finishing would be required so that
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`a glass edge could be handled (to protect the handler), but that is not the same
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`degree of finishing necessary for an exposed edge in a final installed product. Id.
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`Thus, McCabe’s disclosure of rounding is not to the degree required by claims 2,
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`16, and 33.
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`E.
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`Lupo Does Not Disclose “Roll Adjustment”; Tsuyama Does Not
`Disclose “Yaw Adjustment”
`Petitioner does not deny (nor can it) that the terms pitch, yaw, and roll have
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`a well-accepted, specific, plain meaning to one of ordinary skill in the art. Those
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`terms define a precise coordinate system for vehicle motion, as discussed by expert
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`Nranian, and as shown in SAE (Society of Automotive Engineers) articles as well
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`as the evidence of Petitioner’s own expert, McClellan:
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`Ex. 1009, 2 (cited approvingly by Mr. McLellan at Ex. 1002, ¶ 51)
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`Ex. 2005, 3, Fig. 3; Ex. 2001, ¶ 118
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`Petitioner’s Reply argues for the first time that the ‘648 patent uses the terms
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`pitch, yaw, and roll in a different, specialized way. Petitioner argues that the “roll
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`axis is the longitudinal axis of mirror assembly, not the vehicle.” Reply, 16.
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`Recognizing that this orientation is not the universally-accepted understanding in
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`the automotive context, Petitioner contends that “the ‘648 Patent plainly describes
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`[a] reorientation” of the standard coordinate system. Reply, 14. This new theory
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`fails for multiple reasons.
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`First, Petitioner’s new theory is a product solely of attorney argument,
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`unsupported by testimony of one of skill in the art. Petitioner’s expert did not
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`testify on this point in response to Nranian or to the Institution Decision.
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`In the two paragraphs where Petitioner’s expert opined on the meaning of
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`pitch, yaw, and roll, he never discussed whether the coordinate system would be
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`defined relative to the vehicle or to the mirror. Ex. 1002, ¶¶ 50–51. Nor did he
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`discuss any alleged “reorientation” of the standard coordinate system. See id. To
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`the contrary, McClellan’s testimony supports Patent Owner, as he said: “It is my
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`opinion that these claim elements are given their plain and ordinary meaning as
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`understood by a person having ordinary skill in the art.” Id., ¶ 50. Even the
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`Petition belies this “reorientation” argument, as it stated: “The ‘648 specification
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`does not specifically define yaw and roll.” Petition, 6. Absent a special definition
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`or
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`lexicography,
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`these claim
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`terms must be given
`
`their plain meaning
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`understanding to one of ordinary skill in the art.
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`Second, Petitioner’s strained reading of the specification to support its new
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`theory is incorrect. Petitioner discusses Figures 56, 58A, 58B, and 68, arguing
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`they support Petitioner’s reorientation argument. Reply, 14–16. They do not.
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`None of those Figures contains an illustration of pitch, yaw, or roll. The
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`accompanying discussion in the specification does not use those terms either,
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`except to generically refer to “pitch, yaw, and roll” axes and adjustment, without
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`further explanation. See Ex. 1001, 68:43–50, 69:54–65. For example, Petitioner
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`mislabels arrows in Figure 68 with the term “roll adjustment” in its Reply at page
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`16, but neither the figure nor the specification identifies it as such. This newfound
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`reading of the specification as an explicit reorientation of the universally-accepted
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`coordinate system for pitch, yaw, and roll is unsupported, conclusory attorney
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`argument.
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`Third, Petitioner argues that the claim language itself specifically redefines
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`the orientation of the standard pitch, yaw, and roll axes. Petitioner asserts the
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`claims are “not directed to a vehicle as a whole, but rather the exterior rearview
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`mirror.” Reply, 16. Petitioner also argues that the claim language “relative to the
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`exterior portion of the equipped vehicle…” is an express “reorientation of the
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`[pitch, yaw, and roll] axes.” Id., 14. This misreads the claims.
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`The claims are not to a mirror in isolation, as Petitioner contends, but rather
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`to one “mount[ed] at an exterior portion of a vehicle” and configured “to adjust the
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`rearward field of view of a driver of the equipped vehicle who views said exterior
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`mirror reflective element when operating the equipped vehicle.” Ex. 1001, 76:38–
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`60. Claim 9 specifically refers to “yaw and roll adjustment of said exterior mirror
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`reflective element relative to the exterior portion of the equipped vehicle at which
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`said exterior rearview mirror assembly is attached.” Id., 77:28–33 (emphasis
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`added). One of skill in the art understands that this adjustment is for the benefit of
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`the “driver of the equipped vehicle who views” the mirror “when operating the
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`equipped vehicle.” Id., 76:53–60. Petitioner’s contrary contention fails to account
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`for this express claim language. Thus, the claim language is perfectly consistent
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`with the plain meaning understanding of pitch, yaw, and roll as coordinate axes for
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`the vehicle at which the exterior rearview mirror assembly is attached.
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`In response to the Board’s specific inquiry in the Institution Decision, Paper
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`No. 7 at 14–15, Nranian testified that the “relative to” language in claim 9 does not
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`change the orientation of the accepted pitch, yaw, and roll axes, but rather shifts
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`the coordinate system from the middle of the vehicle to the side of the vehicle
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`where the “exterior rearview mirror assembly is attached.” Ex. 2010, ¶¶ 7–14.
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`Petitioner leaves this unrebutted, merely arguing—without expert support—that
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`this somehow reads those words out of the claim. Reply, 14. Not at all. Patent
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`Owner’s expert Nranian explained that the “claim language defines the primary
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`axis about which the adjustments occur: ‘the exterior portion of the equipped
`
`vehicle at which said exterior rearview mirror assembly is attached.’” Id., ¶ 10.
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`“The claims simply define the anchor point of the adjustment[.]” Id., ¶ 12.
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`Fourth, Petitioner’s “common sense” argument fails as well. Petitioner
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`asserts that “yaw” adjustment under the standard understanding of that term
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`“would be unhelpful for the driver” because it does not “vertically” or “laterally”
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`adjust the driver’s field of view. Reply, 16. But claim 9 of the ‘648 patent
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`addresses adjustment in three dimensions, whereas the standard vertical and lateral
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`adjustment of the prior art is exemplified by Lupo. See Ex. 1001, 69:54–65
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`(explaining the movement “about multiple axes to provide the desired three
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`dimensional adjustment of the mirror reflective element at the side of the vehicle”);
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`Ex. 1001, 68:47–50 (“thus providing independent and/or cooperative pitch, yaw
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`and roll adjustment of the reflective element relative to the side of the vehicle”).
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`Claims 9, 25, 31, an
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