Motherson Offered No Additional Expert Testimony
`
`Attorney Argument Only, No Expert
`Testimony Rebutting The Testimony
`of Patent Owner’s Expert, Nranian
`
`13 July 2021
`
`25
`
`Demonstrative Exhibit, Not Evidence
`
`Petitioner Reply at 14.
`
`
`
`Attorney Argument Only, No Expert
`Testimony Rebutting The Testimony
`of Patent Owner’s Expert, Nranian
`
`13 July 2021
`
`25
`
`Demonstrative Exhibit, Not Evidence
`
`Petitioner Reply at 14.
`
`
`
`Motherson’s Reply Proposes A New Construction
`
`Petitioner’s Original Construction
`
`Petitioner’s Reply Construction
`
`Patent Owner’s Construction
`
`roll: “a rotation about a main axis”
`
`yaw: “a rotation about a vertical
`axis perpendicular to the main
`axis”
`
`roll: “a rotation about a main axis
`of the mirror assembly”
`
`roll: “a rotation about a vehicle’s
`longitudinal axis”
`
`yaw: “a rotation about a vertical
`axis perpendicular to the main
`axis of the mirror assembly”
`
`yaw: “a rotation about a vehicle’s
`vertical axis”
`
`Paper No. 1 (Petition) at 6.
`
`Paper No. 13 (Petitioner Reply) at 17.
`
`13 July 2021
`
`26
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Motherson’s New Construction Is Unsupported By Any
`Expert Testimony, And Is Contrary To The Claim Language
`
`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.
`
`9. The exterior rearview mirror assembly of claim 1, wherein said multi-axis adjustment mechanism is operable for
`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.
`
`13 July 2021
`
`27
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`The ‘648 Patent’s Three-Dimensional Adjustment Improves
`Over The Two-Dimensional Adjustment Of Lupo
`
`“The actuators … may otherwise provide
`multiple axes of adjustment of the attachment
`plate and mirror head (such as, for example, a
`ball actuator that may rotate or pivot the
`mounting arm or structure 740 in a three
`dimensional manner at the side of the vehicle).
`For example, the arm may be pivoted up/down
`and forward/rearward and any directions in
`between, and the arm may be rotated about its
`longitudinal axis to further adjust the arm and
`the attachment element and the reflective
`element relative to the side of the vehicle (thus
`providing independent and/or cooperative
`pitch, yaw and roll adjustment of the reflective
`element relative to the side of the vehicle).”
`
`PITCH
`
`YAW
`
`Ex. 1001 at 68:36—50.
`
`Paper No. 1 (Petition) at 27 (showing Petitioner’s
`marked up version of Lupo Figure 2)
`
`13 July 2021
`
`28
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Agenda
`
`1. Bracket
`
`2. Yaw, Pitch and Roll
`
`3. Exterior Mirror Reflective Element
`Fixedly Attached At Said Mirror Head
`
`4. Rounded
`
`5. Cooperatively Operable Actuators
`
`6. Tsuyama Obviousness
`
`13 July 2021
`
`29
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`‘648 Patent, Claim 1
`
`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.
`
`13 July 2021
`
`30
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`“Exterior Mirror Reflective Element Fixedly Attached At Said Mirror Head”
`
`Petitioner’s Construction
`
`Patent Owner’s Construction
`
`none
`
`Exterior mirror reflective element
`fixedly attached to a peripheral
`exterior surface portion of said
`mirror head
`
`13 July 2021
`
`31
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`The ‘648 Distinguishes The Prior Art Based
`On Attachment “At” The Mirror Head
`
`“Optionally, and desirably, a mirror casing or shell 744 (FIG. 68A)
`may be readily attached at the mirror attachment element or
`bracket or to the mirror reflective element itself in order to
`provide the desired or appropriate appearance or styling of the
`exterior rearview mirror at the side of the vehicle and to provide
`mechanical protection of the reflective element and the like from
`environmental exposure.”
`
`Ex. 1001 at 68:62—69:1.
`
`“A typical known exterior mirror construction 760 is shown in FIG.
`68B, where the mirror reflective element 762 is disposed in or
`housed in a mirror casing 764 (and is inboard of the open end of
`the mirror casing and not attached thereto) and is adjustable
`relative to the mirror casing via a mirror actuator 766, which is
`also disposed in the mirror casing and occupies space behind the
`reflective element and within the cavity of the mirror casing.”
`Ex. 1001 at 70:4—11.
`
`13 July 2021
`
`32
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`The ‘648 Specification Further Supports Patent Owner’s Construction
`
`“The mirror reflective element can be
`adhered or otherwise fixedly attached at
`a surface or mounting portion of the
`mirror head, and the mirror head can be
`any shape (such as generally flat or
`having a narrow or thin profile or the like)
`depending on the particular application
`of the mirror assembly and the vehicle
`manufacturer's design preferences.”
`
`“In the illustrated embodiment, the
`reflective element is adhered at a rear
`attaching surface of the mirror head
`housing, with the front perimeter edge
`regions of the reflective element being
`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.”
`
`Ex. 1001 at 71:53—58.
`
`Ex. 1001 at 58:56—59:6.
`
`13 July 2021
`
`33
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`The ‘648 Specification Further Supports Patent Owner’s Construction
`
`13 July 2021
`
`34
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Clear Distinction Between Lupo And The ‘648
`
`Figure 1 of Lupo (Petition at 20).
`
`Figure 58A of the ‘648,
`colored, enlarged and rotated.
`
`13 July 2021
`
`35
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Agenda
`
`1. Bracket
`
`2. Yaw, Pitch and Roll
`
`3. Exterior Mirror Reflective Element
`Fixedly Attached At Said Mirror Head
`
`4. Rounded
`
`5. Cooperatively Operable Actuators
`
`6. Tsuyama Obviousness
`
`13 July 2021
`
`36
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`“Rounded” In ‘648 Specification
`
`“…with the front glass substrate of the
`electrochromic laminate element being
`constructed with its first
`surface/outermost perimeter edges
`slanted or beveled or rounded or the
`like…. in order to obviate/avoid a
`sharp edge at the front or outermost
`perimeter surface of the mirror
`reflective element and mirror assembly
`that could potentially hurt/injure an
`occupant of a vehicle…”
`
`“The front glass substrate of the mirror
`reflective element (behind which the
`sensing pads and sensing circuitry are
`disposed) typically may have a
`thickness of about 3.2 mm or
`thereabouts, such that the perimeter
`edge portions can have a full 2.8 mm
`radius of curvature to meet the
`requirements of at least a 2.5 mm
`minimum radius of curvature.”
`
`Ex. 1001 at 28:25—46.
`
`Ex. 1001 at 9:38-42.
`
`13 July 2021
`
`37
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`“Rounded” In WO/2011/044312 (Incorporated By Reference)
`
`“…it is desired to have at least a 2.5
`mm radius of curvature at the
`perimeter edges of a mirror assembly
`(typically at a bezel of a conventional
`mirror assembly) to meet the
`minimum safety standards for head
`impact with the mirror, such as during
`a sudden stop or collision of the
`equipped vehicle.”
`
`“If the reflecting surface projects
`beyond the protective housing, the
`radius of curvature on the edge of the
`projecting part must be not less than
`2.5 mm…”
`
`“…the edge of the front substrate of
`the mirror having on its perimeter a
`radius of curvature greater than or
`equal to 2.5 mm (such as 3 mm or
`thereabouts) at all points and in all
`directions, and thus the mirror
`assembly satisfies the requirements of
`ECE Regulation No. 46…”
`
`Ex. 2011 at 8-9.
`
`Ex. 2011 at 18.
`
`Ex. 2011 at 21.
`
`13 July 2021
`
`38
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`“Rounded” in the ‘648 Requires a Minimum
`Radius of Curvature to Satisfy Safety Regulations
`
`98. The term “rounded” has a particular meaning to one of ordinary skill in the art in the context of the ’648 Patent. That plain
`meaning is that the “outermost front perimeter edge” of the “exterior mirror reflective element” is exposed and has at least a
`2.5 mm minimum radius of curvature.
`
`103. Taken together, these passages indicate that the requirement that the edge of the reflective element be “rounded” is a
`safety issue, and that the reference to “meet the requirements” of a minimum radius of curvature is to the specific safety
`regulations discussed and identified elsewhere in the patent, including FMVSS 111 and ECE Regulation No. 46.
`
`104. Further, one of skill in the art would understand that the patent’s reference to a 2.5 mm minimum radius of curvature is
`dictated by, and consistent, with the safety regulations. Specifically, a 2.5 mm minimum radius of curvature is an express
`requirement of ECE Regulation No. 46. …
`
`Ex. 2001, Nranian Decl. ¶¶ 98, 103, 104.
`
`13 July 2021
`
`39
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`McCabe Does Not Disclose A “Rounded” Glass Edge
`To The Degree Required By The ‘648 Claims
`
`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….
`
`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….
`
`19. By contrast, the rounding disclosed in the ‘648 patent (and as claimed in claims 2, 16 and 33) is done because…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. … Edges that were finished to provide a measure of safety for purposes of handling and
`manufacture would not be considered sufficiently rounded to be safe to use as an exposed edge in a vehicle. 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 ‘648
`patent.
`
`Ex. 2010, Nranian Supp. Decl. ¶¶ 17-19.
`
`13 July 2021
`
`40
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`McCabe Does Not Disclose A “Rounded” Glass Edge
`To The Degree Required By The ‘648 Claims
`
`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 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 arrive at if combining McCabe and Lupo. Figure 29 of
`McCabe, however, is fundamentally different than the rounded, exposed edge of the ‘648 patent, shown in Figure 30….
`
`13 July 2021
`
`41
`
`Ex. 2010, Nranian Supp. Decl. ¶ 22 (highlighting added).
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Motherson’s Reply Ignores The Material Difference Between the
`“Rounding” in McCabe and the “Rounding” in the ‘648 Claims
`
`“McCabe shows that rounding the front perimeter edge…would
`prevent a sharp edge of the front substrate and make the
`glass safer to handle.”
`
`“Thus, rounding the front perimeter edge of the glass as
`described by McCabe…provides additional safety to workers
`during manufacture.”
`
`Petitioner Reply at 24.
`
`Attorney Argument Only, No Expert Testimony Rebutting The
`Testimony of Patent Owner’s Expert, Nranian
`
`13 July 2021
`
`42
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Agenda
`
`1. Bracket
`
`2. Yaw, Pitch and Roll
`
`3. Exterior Mirror Reflective Element
`Fixedly Attached At Said Mirror Head
`
`4. Rounded
`
`5. Cooperatively Operable Actuators
`
`6. Tsuyama Obviousness
`
`13 July 2021
`
`43
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`No Evidence Of Express Or Inherent Anticipation
`
`“We agree with Patent Owner that the ’648 specification suggests
`cooperative operation includes operating at the same time.”
`
`Inst. Dec. at 25.
`
`Inherency “requires that ‘the missing descriptive matter [must be]
`necessarily present in the thing described in the reference, and that it
`would be so recognized by persons of ordinary skill.’”
`
`Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)
`
`13 July 2021
`
`44
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Petitioner Made Impermissible Shift To A New
`Obviousness Theory In Reply, With No Expert Support
`
`“Even if Lupo does not explicitly describe the motors simultaneously
`operable, this would be a simple, straightforward application that would have
`been obvious and easy for a POSA to implement.”
`
`Petitioner Reply at 22-23.
`
`“All arguments for the relief requested in a motion must be made in the motion. A
`reply may only respond to arguments raised in the corresponding opposition,
`patent owner preliminary response, patent owner response, or decision on
`institution.”
`
`37 C.F.R. § 42.23(b); Intelligent Bio-Systems, Inc. v. Illumina Cambridge
`Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016); 35 U.S.C. § 312(a)(3).
`
`Attorney Argument Only, No Expert Testimony Supporting
`Brand New Obviousness Theory
`
`13 July 2021
`
`45
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Agenda
`
`1. Bracket
`
`2. Yaw, Pitch and Roll
`
`3. Exterior Mirror Reflective Element
`Fixedly Attached At Said Mirror Head
`
`4. Rounded
`
`5. Cooperatively Operable Actuators
`
`6. Tsuyama Obviousness
`
`13 July 2021
`
`46
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Tsuyama Discloses a “Rear-Under” Mirror, Not a Rearview Mirror
`
`Ex. 1005 at 4:20-30.
`
`13 July 2021
`
`47
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Petitioner Argued Tsuyama Discloses Use As A
`Side Mirror, But Tsuyama Was Referring To Prior Art
`
`Petition at 49.
`
`Ex. 1005 at 1:28-34.
`
`13 July 2021
`
`48
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Petitioner Shifted To Impermissible, New Obviousness
`Theory In Reply, With No Expert Support
`
`“Because a POSA would understand that Figure 1 could be used as a
`side mirror, a POSA would also understand that the similarly structured
`mirror in Figure 5 could also be used as a side mirror.”
`
`“Thus it would have been obvious for a POSA to move the remote-
`controlled mirror of Tsuyama to the side of the vehicle.”
`
`“Attaching the remote-controlled mirror apparatus of Tsuyama to the
`side of the vehicle would be well within the ability of a POSA.”
`
`Petitioner Reply at 29-30.
`
`Attorney Argument Only, No Expert Testimony Supporting
`Brand New Obviousness Theory
`
`13 July 2021
`
`49
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Petitioner Attempts to Repurpose Testimony
`From McLellan Under New Obviousness Theory
`
`“Mr. McClellan explained that a POSA would understand
`this disclosure of Tsuyama to mean that the ‘mirror
`assembly could be used as a side mirror that is
`attachable by a cylindrical support arm instead of the
`stay.’ (Ex. 1002, ¶223.)”
`
`Petitioner Reply at 29-30.
`
`Ex. 1002 at ¶ 223.
`
`13 July 2021
`
`50
`
`Ex. 1005 at 1:28-34.
`
`Demonstrative Exhibit, Not Evidence
`
`
`
`Petitioner Abandoned Other Problematic Positions
`
`Claim 5
`
`“[I]t seems Petitioner relies on Tsuyama’s stay as both the recited
`attachment portion (see Pet. 52) and a portion of the recited support
`structure (see id. at 60–61). Likewise, it appears that Petitioner contends
`that only the other alleged portion of the support structure (i.e., Tsuyama’s
`mirror holder base 6) is adjustable about multiple degrees of freedom. See
`id. at 58–61. We agree with Patent Owner’s concerns about this mapping
`(see Prelim. Resp. 60–61), and we invite the parties to address this issue
`further during the trial.”
`
`Institution Decision (Paper No. 7) at 43.
`
`Claim 9
`
`“Taking the recited frame of reference into account, we agree that
`Petitioner has not adequately shown the oblique axes to which Petitioner
`points would have been understood as ‘roll’ and ‘yaw.’”
`
`Id. at 45.
`
`13 July 2021
`
`51
`
`Demonstrative Exhibit, Not Evidence
`
`
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