Trials@uspto.gov
`571-272-7822
`
`Paper 22
`Date: October 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOTHERSON INNOVATIONS CO., LTD.,
`Petitioner,
`v.
`MAGNA MIRRORS OF AMERICA, INC.,
`Patent Owner.
`
`IPR2020-00777
`Patent 10,261,648 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, SHEILA F. McSHANE, and JESSICA C.
`KAISER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 22
`Date: October 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOTHERSON INNOVATIONS CO., LTD.,
`Petitioner,
`v.
`MAGNA MIRRORS OF AMERICA, INC.,
`Patent Owner.
`
`IPR2020-00777
`Patent 10,261,648 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, SHEILA F. McSHANE, and JESSICA C.
`KAISER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`
`I.
`INTRODUCTION
`On March 31, 2020, Motherson Innovations Co., Ltd. (“Petitioner”)
`filed a Petition requesting an inter partes review of claims 1–13 and 15–36
`of U.S. Patent No. 10,261,648 B2, which issued on April 16, 2019
`(Ex. 1001, “the ’648 patent”). Paper 1 (“Pet.”). Magna Mirrors of America,
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). Taking into account the arguments presented in these
`papers, we determined the information presented in the Petition established
`that there was a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, and we instituted this inter partes
`review as to all challenged claims on October 7, 2020. Paper 7 (“Dec.”).
`During the course of the trial, Patent Owner filed a Patent Owner
`Response (Paper 11, “PO Resp.”); Petitioner filed a Reply to the Patent
`Owner Response (Paper 13, “Pet. Reply ”); and Patent Owner filed a Sur-
`reply (Paper 14, “PO Sur-reply”). An oral hearing was held on
`July 13, 2021, and a transcript of the hearing is included in the record. Paper
`20 (“Tr.”).
`For the reasons discussed in detail below, we determine that Petitioner
`has shown by a preponderance of the evidence that claims 1, 2, 5, 8–11, 15,
`16, 26, and 34–36 of the ’648 patent are unpatentable, but has not shown by
`a preponderance of the evidence that claims 3, 4, 6, 7, 12, 13, 17–25, and
`27–33 of the ’648 patent are unpatentable.
`
`
`II. BACKGROUND
`The ’648 Patent (Ex. 1001)
`A.
`The ’648 patent describes an exterior rearview mirror assembly for a
`vehicle, e.g., a side mirror, mounted on the exterior of a vehicle. Ex. 1001,
`
`2
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`code (57), 58:49–52. Typically, exterior rearview mirror assemblies include
`a mirror casing (or housing) which holds a mirror reflective element. Id. at
`70:4–6. Further, the position of the mirror reflective element can be
`adjusted so that the driver of the vehicle can see a particular “rearward field
`of view” in the mirror reflective element. See id. at 61:57–59.
`One “typical known exterior mirror construction” has the mirror
`reflective element “disposed in or housed in a mirror casing 764 (and is
`inboard of the open end of the mirror casing and not attached thereto) and is
`adjustable relative to the mirror.” Ex. 1001, 70:4–11; see id. at Fig. 68B.
`That is, the mirror reflective element itself is adjusted (or repositioned),
`while the mirror casing is not repositioned. See id. In the ’648 patent, the
`mirror assembly, instead, has its mirror reflective element “disposed at and
`attached to or otherwise fixed relative to the mirror casing 744, such that,
`during adjustment, the reflective element and mirror casing move in
`tandem.” Id. at 70:17–23; see id. at 71:45–57. That is, the mirror casing and
`the attached mirror reflective element are repositioned together to adjust the
`rearward field of view in the mirror reflective element, rather than only
`repositioning the mirror reflective element.
`Figure 56 shows such a mirror assembly and is reproduced below.
`
`3
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`
`
`
`Figure 56 is an exploded perspective view of an exterior rearview mirror
`assembly for “an exterior rearview mirror assembly that is configured for
`mounting at a side region of a vehicle.” Ex. 1001, 5:6–8, 58:50–52. Starting
`at the leftmost element, “exterior rearview mirror assembly 610 comprises a
`reflective element 612,” e.g., a mirror. Id. at 58:56–64. Reflective element
`612 “is attached at a rear attaching portion 614a of a mirror head housing
`614.” Id. at 58:58–65. For example, reflective element 612 can be “adhered
`or otherwise fixedly attached” to rear attaching portion 614a (of mirror head
`housing 614). Id. at 58:65–67. Furthermore, “the front perimeter edge
`regions of the reflective element [can be] curved or rounded or beveled to
`provide a smooth or continuous transition between the generally planar front
`surface of the reflective element and the side walls or surfaces of the mirror
`housing.” Id. at 58:67–59:6; see id. at 34:57–36:22, Figs. 32–34, 37–39.
`
`4
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`Continuing clockwise in Figure 56, mirror head housing 614 and
`affixed reflective element 612 are attached to a series of brackets and
`rotating actuators. Specifically, “mirror head housing 614 is attached at an
`inner bracket or mounting element 616” which is then “attached at a first
`actuator 618.” Id. at 59:7–9. First actuator 618 can be driven rotationally,
`and, accordingly, “imparts a rotation of bracket 616 and mirror head housing
`614 about a first pivot axis 618a.” Id. at 59:9–12. Still following the
`components clockwise, first actuator 618 “is attached to or mounted at an
`outer bracket 620 that is mounted to or attached to a second actuator 622.”
`Id. at 59:12–14. Second actuator 622 can also be driven rotationally and so,
`“imparts of rotation of bracket 620 and first actuator 618 and bracket 616
`and mirror head housing 614 about a second pivot axis 622a.” Id. at 59:12–
`18. Finally, “second actuator 622 . . . is attached at or disposed at or in an
`outer cover 624” and “outer cover 624 is disposed at or attached to or
`mounted at the side portion of the vehicle (and pivotally or rotatably
`mounted thereat, such as via the actuator 622) when the exterior mirror
`assembly is normally mounted at the side of the vehicle.” Id. at 59:13–22.
`With such an assembly and mounting design, the driver of a vehicle is
`able to adjust his or her rearward and/or sideward field of view, which is
`reflected in the assembly’s reflective element. Id. at 59:23–26; see id. at
`67:55–67. Specifically, “the mirror head is adjustable about the first and
`second axes (via selective actuation of one or both actuators) to adjust the
`rearward field of view for the driver of the vehicle.” Id. at 59:23–26, 66:48–
`52. The actuators rotate their respective brackets, thereby adjusting the
`position of the mirror head attached to the brackets. Id. at 59:26–39. And,
`because the mirror head and reflective element are attached, adjusting the
`position of the mirror head via the actuators adjusts the position of the
`
`5
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`reflective element in tandem. Id. at 69:5–9, 70:21–23, 71:45–47
`(“[A]ctuators adjust the mirror head and the reflective element in tandem
`(and do not adjust the reflective element relative to the mirror casing).”).
`Further, the actuators are relatively positioned to allow the mirror
`head (and attached reflective element) to be rotated about multiple axes. See
`id. at 59:26–47, 59:55–60:4. For example, “the pivot axes [of the actuators]
`may be angled relative to one another at an angle of at least about 15 degrees
`or at least about 30 degrees or more, such as an angle of up to about 90
`degrees.” Id. at 59:42–46. Further, the multiple axes of rotation include
`“pitch, yaw and roll axes or about a generally vertical axis and/or other axes
`non-coaxial with the first or generally vertical axis or the like.” Id. at 68:19–
`22; see id. at 68:47–50. And, “[b]ecause of the angled relationship of the
`axes of rotation of the actuators and the angled interface or mounting
`interface of the mirror head housing 614 and outer cover 624, the first and
`second actuators may be operated together or cooperatively operated to
`laterally adjust the rearward field of view.” Id. at 59:55–59. Alternatively,
`in other embodiments, “the first and second actuators may be operated
`separately or together or cooperatively operated to vertically and/or laterally
`adjust the rearward field of view.” Id. at 66:63–67:10; see id. at 68:42–50.
`Additionally, “the actuators 618, 622 may operate at different speeds to
`provide the desired or selected lateral adjustment with limited vertical
`adjustment (and/or to provide a desired or selected vertical adjustment with
`limited lateral adjustment and/or to provide a desired or selected vertical and
`lateral adjustment).” Id. at 60:12–17.
`B.
`The Challenged Claims
`Of the challenged claims, claims 1, 15, and 26 are independent.
`Claim 1 is reproduced below.
`
`6
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`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.
`Ex. 1001, 76:38–60.
`C.
`Related Proceedings
`Petitioner and Patent Owner state that there are no related proceedings
`involving the ’648 patent. Pet. 74, Paper 4, 1.
`D.
`References
`Petitioner relies on the following references:
`1.
`“Lupo” (GB 2,244,965 A; published Dec. 18, 1991) (Ex. 1003);
`2.
`“McCabe” (US 7,255,451 B2; issued Aug. 14, 2007)
`(Ex. 1004); and
`3.
`“Tsuyama” (US 6,270,227 B1; issued Aug. 7, 2001) (Ex. 1005).
`
`7
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`E.
`Testimonial Evidence
`Petitioner supports its challenge with a declaration from David R.
`McLellan. (Ex. 1002, “McLellan Dec.”).
`Patent Owner has submitted a declaration from Michael Nranian
`(Ex. 2001, “Nranian Dec.”) and a First Supplemental Declaration from
`Mr. Nranian (Ex. 2010, “Nranian Supp. Dec.”). Petitioner cross-examined
`Mr. Nranian by deposition. Ex. 1020 (“Nranian Dep.”).
`F. Grounds Asserted
`Petitioner challenges the patentability of claims 1–13 and 15–36 of the
`’648 patent on the following grounds:
`
`
`Claim(s)
`35 U.S.C. §
`Challenged
`1, 3, 5–13, 15
`2, 16–17, 19–36
`4
`18
`1, 5, 8–9, 12, 15
`2, 16, 19–20, 24–
`27, 31, 33, 36
`
`
`
`Reference(s)/Basis
`
`103(a)1
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Lupo
`Lupo, McCabe
`Lupo, Tsuyama
`Lupo, McCabe, Tsuyama
`Tsuyama
`Tsuyama, McCabe
`
`III. ANALYSIS
`
`Legal Principles
`A.
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the
`’648 patent has an effective filing date prior to the effective date of the
`applicable AIA amendment, we refer to the pre-AIA versions of § 103.
`
`8
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in the record,
`objective evidence of nonobviousness.2 See Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek
`out precise teachings directed to the specific subject matter of the challenged
`claim, for a court can take account of the inferences and creative steps that a
`person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
`B.
`Level of Ordinary Skill in the Art
`Petitioner asserts a person of ordinary skill in the art “would have
`possessed at least a bachelor’s degree in mechanical engineering or
`engineering technology with at least two years of experience in the
`automotive industry (or equivalent degree or experience).” Pet. 3 (citing
`Ex. 1002 ¶¶ 34–36). Petitioner also asserts that a “person could also have
`qualified as a [person of ordinary skill in the art] with some combination of
`(1) more formal education (such as a master’s degree) and less technical
`experience, or (2) less formal education and more technical or professional
`experience.” Id. (citing Ex. 1002 ¶¶ 34–36).
`Patent Owner asserts, both before and after institution, that a person
`having ordinary skill in the art “would hold a Master of Science degree in
`
`
`2 Patent Owner does not present any objective evidence of nonobviousness
`as to the challenged claims.
`
`9
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`any kind of engineering relevant to automotive component design (e.g.,
`electrical engineering, mechanical engineering, or optical engineering), as
`well as 2–3 years of experience in the automotive industry designing
`components for automobiles.” Prelim. Resp. 7 (citing Ex. 2001 ¶¶ 35–41;
`Ex. 2002); PO Resp. 1 (citing Ex. 2001 ¶¶ 35–41; Ex. 2002).
`In our Decision on Institution, we adopted Patent Owner’s
`formulation because it is consistent with the record, and we also agreed with
`Petitioner that more formal education with less technical experience and vice
`versa could suffice. Dec. 9. Neither party asks us to depart from that
`formulation, and we continue to apply it here.
`
`Claim Construction
`C.
`In an inter partes review, we construe claim terms according to the
`standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
`Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under that standard,
`we construe claims “in accordance with the ordinary and customary meaning
`of such claim as understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent.” Id. Furthermore, we expressly
`construe the claims only to the extent necessary to resolve the parties’
`dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`In our Decision on Institution, we discussed the following limitations:
`(1) “an exterior mirror reflective element fixedly attached at said mirror
`head”; (2) “yaw” and “roll”; and (3) “rearward field of view.” Dec. 10–15.
`
`10
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`Regarding the first limitation, we determined the limitation “is not limited to
`attachment of the exterior mirror reflective element at a peripheral exterior
`surface portion of said mirror head” as Patent Owner argued. Id. at 10, 14.
`Regarding “yaw” and “roll,” we did not adopt either party’s proposed
`construction. Id. at 14. We noted that the claims which use the terms “yaw”
`and “roll” “recite a frame of reference for the yaw and roll adjustment: ‘yaw
`and roll adjustment of said exterior mirror reflective element relative to the
`exterior portion of the equipped vehicle at which said exterior rearview
`mirror assembly is attached.’” Id. at 14–15. We further determined that
`Petitioner’s proposed construction was overbroad, and that Patent Owner’s
`proposed construction defined “yaw” and “roll” “from the frame of
`reference of the vehicle as a whole.” Id. at 15. We invited the parties to
`further discuss the construction of “yaw” and “roll” considering the recited
`frame of reference. Id. Regarding “rearward field of view,” we adopted
`Patent Owner’s proposed construction as a “view of rearwardly approaching
`or following vehicles.” Id.3
`In its trial briefing, Patent Owner proposes constructions for the
`following claim limitations: (1) “exterior mirror reflective element fixedly
`attached at said mirror head”; (2) “a bracket to which said exterior mirror
`reflective element is fixedly attached”; (3) “wherein the outermost front
`perimeter edge of said exterior mirror reflective element is rounded”; and (4)
`“yaw” and “roll.” PO Resp. 1–37. In its Reply, Petitioner addresses the
`
`
`3 In its Response, Patent Owner also proposed the same construction. PO
`Resp. 24. As noted, in our Decision on Institution, we preliminarily agreed
`with that construction (Dec. 15), and during trial, Petitioner did not dispute it
`(Pet. Reply 4). We continue to adopt Patent Owner’s undisputed proposed
`construction of this term.
`
`11
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`same limitations. Pet. Reply 1–17. For purposes of this decision, we
`address all of these terms below.
`1.
`“exterior mirror reflective element fixedly attached at
`said mirror head”
`In its Petition, Petitioner does not propose a construction for the
`limitation “exterior mirror reflective element fixedly attached at said mirror
`head,” but instead proposes that the limitation “fixedly attached” means
`“securely fastened, either directly or indirectly, and not readily detachable.”
`Pet. 5–6 (citing Ex. 1002 ¶¶ 48–49). Prior to institution, Patent Owner
`argued that we should construe the term “an exterior mirror reflective
`element fixedly attached at said mirror head” to mean that the mirror
`reflective element is “fixedly attached to a peripheral exterior surface
`portion of said mirror head.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 42–45, 75–
`88) (emphasis omitted). In our Decision on Institution, we preliminarily
`determined that this claim phrase is not limited in the way Patent Owner
`contends, and we did not further construe it at that stage of the proceeding.
`Dec. 10–14.
`During trial, the issue as to this claim phrase largely remains the same.
`In its Response, Patent Owner contends, as it did prior to institution, that the
`“exterior mirror reflective element fixedly attached at said mirror head”
`means “fixedly attached to a peripheral exterior surface portion of said
`mirror head.” PO Resp. 1 (citing Ex. 2001 ¶¶ 42–45, 75–88). Patent Owner
`contends that the embodiment depicted in Figure 58A of the Specification
`informs the meaning of the claim language at issue. Id. at 1–2 (citing
`Ex. 1001, Fig. 58A; Phillips, 415 F.3d at 1315–16). Patent Owner further
`contends that all exterior mirror embodiments in the Specification support
`the interpretation that “[t]he mirror reflective element is an element separate
`
`12
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`from the mirror head, and is attached to a particular peripheral exterior
`surface portion of the mirror head, rather than recessed inward within the
`mirror head.” Id. at 2–3 (citing Ex. 1001, Figs. 56, 56A, 68A; Ex. 2001
`¶¶ 78–85). Patent Owner contends the ’648 patent describes how the
`exterior mirror reflective assembly attached at the mirror head provides “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,” and that the Specification further distinguishes the configuration
`of the ’648 patent from known exterior mirror constructions, as depicted in
`Figure 68B, which dispose or house the mirror reflective element within the
`mirror casing, “inboard of the open end of the mirror casing and not attached
`thereto.” Id. at 3–4 (citing Ex. 1001, 58:56–59:6, 70:4–32, Fig. 68B;
`Ex. 2001 ¶¶ 82–83). Patent Owner argues this “allows for space within the
`mirror casing that previously was occupied by the mirror actuators of known
`or conventional mirror assemblies.” Id. at 5 (citing Ex. 1001, 70:24–27;
`Ex. 2001 ¶¶ 83–84); see also id. (contrasting the “known construction” as
`depicted in Figure 68B with that of the present invention as depicted in
`Figure 68A).
`Addressing the Decision on Institution, Patent Owner disagrees that
`the ’648 patent “‘does not make a distinction between’ attachment at the
`peripheral exterior surface of the mirror head and ‘inward from that
`surface.’” Id. at 6 (citing Dec. 13). Patent Owner contends the “’648
`[patent] makes a clear distinction between (i) a ‘frameless reflective
`element’ . . . and (ii) a mirror reflective element having a bezel . . . at the
`perimeter region of the front surface of the reflective element” and that the
`frameless reflective element of the ’648 patent provides the benefit of an
`enhanced viewing area. Id. (citing Ex. 1001, 72:46–48, 60–67; Ex. 2010
`
`13
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`¶¶ 5–6; Ex. 2011, 18–19). Patent Owner also contends the recitation of
`“attached at” as opposed to the prepositional “to” “indicat[es] a location in
`particular place or position.” Id. at 7.
`Patent Owner further disputes our determination in the Decision on
`Institution that the “frameless” appearance is “an optional feature of the
`invention.” Id. at 8 (citing Dec. 13). Patent Owner contends that because
`the ’648 patent does not describe the exterior mirror reflective element
`disposed within the housing of the mirror head, “the ‘frameless’ look is a
`necessary benefit of the ‘present invention.’” Id. Thus, Patent Owner
`contends that the claim language of the ’648 patent is not broader than the
`disclosed embodiment that attaches the reflective element at the periphery of
`the mirror head. Id. (citing SuperGuide Corp. v. DirecTV Enters., Inc., 358
`F.3d 870, 875 (Fed. Cir. 2004)). Patent Owner supports this contention by
`explaining the Specification “describes the features of the ‘present
`invention’ as a whole, [which] limits the scope of the invention.” Id. at 9
`(quoting Verizon Services Corp. v. Vonage Holdings Corp., 503 F.3d 1295,
`1308 (Fed. Cir. 2007)) (citing SciMed Life Sys., Inc. v. Advanced
`Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001); Schriber-
`Schroth Co. v. Cleveland Trust Co., Chrysler Corp., 305 U.S. 47, 57
`(1938)).
`Patent Owner also contends the Board should narrowly construe this
`limitation to require attachment of the mirror reflective element at the
`periphery of the mirror head in order to preserve the validity of the actual
`invention. Id. at 9–10 (citing Smith v. Snow, 294 U.S. 1, 14 (1935); Ruckus
`Wireless, Inc. v. Innovative Wireless Solutions, 824 F.3d 999, 1004 (Fed.
`Cir. 2016); Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545,
`1556 (Fed. Cir. 1996); Phillips, 415 F.3d at 1327). Patent Owner further
`
`14
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`contends the Board “should not have adopted the broader meaning that
`impermissibly captures the very prior art that the ’648 invention sought to
`overcome.” Id. at 10 (citing Ruckus Wireless, Inc., 824 F.3d at 1004).
`In addition, Patent Owner argues that claim 2 of the ’648 patent
`supports Patent Owner’s construction. Id. at 10–11. Specifically, Patent
`Owner relies on Figure 68A in tandem with claim 2’s recitation that the
`“outermost front perimeter edge of [the] exterior mirror reflective element is
`rounded.” Id. at 10 (citing Ex. 1001, 76:61–64). Patent Owner contends
`Figure 68A depicts the rounded front perimeter edge of the mirror reflective
`element is exposed such that the edge is “contactable by a person,” and that
`“no part of [the] mirror casing or shell [] overlap[s] onto or over the
`outermost glass surface of [the] mirror reflective element.” Id. Thus, Patent
`Owner argues that the outermost front perimeter edge of the reflective
`element is rounded in claim 2 because it is exposed and contactable. See
`id. at 11 (citing Ex. 2001 ¶ 88).
`In its Reply, Petitioner asserts that Patent Owner’s proposed
`construction attempts to improperly import a limitation from the
`Specification into the claims. Pet. Reply 2 (citing PO Resp. 1). Petitioner
`contends that the ’648 patent describes both embodiments where the exterior
`reflective element is fixedly attached at a peripheral exterior surface of the
`mirror head and embodiments where the reflective element is not attached to
`an external periphery of the mirror head. Id. (citing Dec. 13). For example,
`Petitioner argues that the disclosure of the ’648 patent supports “that the
`mirror reflective element may be fixedly attached to either a surface or a
`mounting portion of the mirror head.” Id. (citing Ex. 1001, 71:53–59).
`Petitioner next points to the Specification’s disclosure relating to
`interior mirrors and how “[o]ptionally, the mirror assembly may include a
`
`15
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`conventional bezel.” Id. (citing Ex. 1001, 33:64–66). Petitioner contends
`this disclosure of an optional bezel also applies to the exterior rearview
`mirror assembly of the present invention, since “aspects of the [interior]
`mirror assemblies . . . may be incorporated in or associated with an exterior
`rearview mirror assembly that is configured for mounting at a side region of
`a vehicle.” Id. (citing Ex. 1001, 58:49–52). As an example, Petitioner
`points to Figure 40 as depicting “a thin flat bezel or cover element [] may
`partially overlap a perimeter region of the front surface of the mirror
`substrate [] (such as a front substrate of an electro-optic or electrochromic
`reflective element or such as a prismatic substrate of a prismatic reflective
`element).” Id. at 2–3 (citing Ex. 1001, 36:23–28, Fig. 40).
`Petitioner further contends that Mr. Nranian’s (Patent Owner’s expert)
`deposition testimony “regarding claim construction [is] not credible and
`should be disregarded.” Id. at 3. Specifically, Petitioner argues Mr. Nranian
`used an improper approach of “look[ing] at the product specifically or the
`prior art or whatever you’re saying reads on the claims” to discern what the
`claim term means. Id. (citing Ex. 1020, 105:3–13; Wilson Sporting Goods
`Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1330 (Fed. Cir. 2006)).
`In its Sur-reply, Patent Owner argues Petitioner’s reliance on Figure
`40 as depicting a bezel that contradicts Patent Owner’s proposed
`construction is misplaced. PO Sur-reply 2. Specifically, Patent Owner
`contends “[w]hether a bezel covers a portion of the mirror reflective element
`is separate from how the reflective element is attached to the mirror head.”
`Id. According to Patent Owner, the bezel is described as “a separate, stand-
`alone piece that can be ‘attach[ed]’ to the ‘mirror casing’” and “is not
`described as a portion of the mirror head.” Id. (citing Ex. 1001, 36:23–47).
`
`16
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`Patent Owner also contends that Petitioner’s arguments ignore the
`“rounded edge” limitation that is added in claim 2. Id. at 3. Patent Owner
`relies upon the doctrine of claim differentiation to assert that because claim
`1 is silent regarding the outermost front perimeter edge of the exterior mirror
`reflective element, claim 1 necessarily encompasses both rounded and non-
`rounded edges and that “[o]ne of skill in the art would know that a non-
`rounded exposed edge would be unsafe but for the use of a protective
`element.” Id. (citing Ex. 2010 ¶¶ 21–22).
`Patent Owner also addresses Petitioner’s arguments about the
`credibility of Mr. Nranian’s testimony. Id. at 3–4. Patent Owner contends
`that Petitioner mischaracterizes Mr. Nranian’s testimony. Id. (citing
`Ex. 1020, 103:13–15, 103:22–23, 104:11–13, 105:3–13). Instead, Patent
`Owner contends Mr. Nranian applied the correct legal standard and testified
`that “you look at . . . the claim terms, the specification, the prosecution
`history, and the extrinsic evidence in that order . . . to interpret what these
`claim terms mean[].” Id. at 4 (quoting Ex. 1020, 101:22–102:18).
`After having reviewed the claim language, the arguments, and the
`evidence, we determine that “an exterior mirror reflective element fixedly
`attached at said mirror head” does not require the mirror reflective element
`to be fixedly attached to a peripheral exterior surface portion of the mirror
`head as Patent Owner contends.
`Turning first to the claim language, claim 1 provides further context
`when describing the adjustment operation by reciting the “multi-axis
`adjustment mechanism is operable to move the mirror head, with said
`exterior mirror reflective element fixedly attached thereto . . . wherein said
`exterior mirror reflective element moves in tandem with movement of said
`mirror head.” Ex. 1001, 76:42–43, 76:49–54. Thus, independent claim 1
`
`17
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`recites a particular attachment between the mirror reflective element and the
`mirror head (i.e., “an exterior mirror reflective element fixedly attached at
`said mirror head”) and also recites those two structure move in tandem with
`each other. Thus, the language of claim 1 recites a fixed attachment between
`the mirror reflective element and the mirror head and further describes the
`movement between those two elements as being “in tandem.” Notably,
`nothing in the claim language recites the attachment of the mirror reflective
`element at or to a peripheral exterior surface portion of the mirror head.
`We do not agree with Patent Owner’s argument that Petitioner’s
`construction effectively rewrites the claim to recite “fixedly attached to”
`instead of “fixedly attached at.” PO Resp. 7. We agree with Patent Owner
`that “the recitation of ‘attached at’ . . . ‘indicat[es] a location in particular
`place or position.’” Id. The claims, however, recite generally “at a mirror
`head” instead of a more particularized “at some particular surface of the
`mirror head.” We also do not agree with Patent Owner’s contentions that
`rely on dependent claim 2 because, as discussed in detail below, we do not
`adopt Patent Owner’s proposed construction of the additional limitation of
`claim 2.
`We next consider the Specification’s description of the exterior
`rearview mirror assembly and how the mirror reflective element is attached
`to the assembly as a whole. Ex. 1001, 68:51–72:23; see also Tr. 61:3–20
`(Patent Owner noting “the discussion [regarding the exterior mirror
`reflective element fixedly attached at said mirror head] has to center on
`Figures 68A and 68B”). In particular, “a mirror casing or shell [] (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
`
`18
`
`
`
`IPR2020-00777
`Patent 10,261,648 B2
`of the vehicle and to provide mechanical protection of the reflective element
`and the like from environmental exposure.” Ex. 1001, 68:62–69:1. The
`disclosure is not limiting as to the means and structure of attachment
`between the mirror reflective element and the mirror casing. Id. at 69:1–4
`(“The mirror casing or shell may be attached via any suitable means, such as
`via snapping one or more casing portions at the rear of the mirror reflective
`element and/or bracket.”). When the two are attached, however, “the mirror
`casing or shell moves in tandem with the [] movement of the mirror
`reflective element.” Id. at 69:5–9.
`The Specification’s discussion contrasting “[a] typical known exterior
`mirror construction” as shown in Fig. 68B with the construction of the
`mirror of the present invention further emphasizes the “in tandem”
`movement resulting from the mirror reflective element being attached at the
`mirror head. Id. at 70:4–32. The known mirror construction has the mirror
`reflective element “disposed in or housed in a mirror casing . . . and not
`attached thereto[] and is adjustable relative to the mirror cas
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
