`571-272-7822
`
`Paper 10
`Entered: June 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SMR AUTOMOTIVE SYSTEMSUSA, INC.,
`Petitioner,
`
`Vv.
`
`MAGNA MIRRORSOF AMERICA,INC.,
`Patent Owner.
`
`Case IPR2018-00505
`Patent 8,147,077 B2
`
`Before SALLY C. MEDLEY,JESSICA C. KAISER, and
`AMBERL. HAGY,Administrative Patent Judges.
`
`MEDLEY,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Jnter Partes Review
`35 US.C. § 314(a)
`
`
`
`IPR2018-00505
`Patent 8,147,077 B2
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`I. INTRODUCTION
`
`SMR Automotive Systems USA,Inc. (“Petitioner”)! filed a Petition
`
`for inter partes review of claims 1-27 of U.S. Patent No. 8,147,077 B2
`(Ex. 1001, “the ’077 patent”). Paper 2 (“Pet.”). Magna Mirrors of America,
`Inc. (“Patent Owner”)filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). Institution of an inter partes review is authorized by statute when
`“the information presented in the petition .
`.
`. and any response .
`.
`. shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challengedin thepetition.” 35 U.S.C.
`§ 314(a). Upon consideration of the Petition and Preliminary Response, we
`
`decline to institute review of claims 1—27 of the 077 patent.
`
`A, Related Matters
`Theparties indicate that the ’077 patent is the subject of Magna
`Mirrors ofAmerica, Inc. v. Samvardhana Motherson Reflectec Group
`Holdings Ltd., Case No. 1:17-cv-00077-RJJ-PJG (W.D. Mich.). Pet. 3;
`Paper 4, 1. The parties also identify numerousotherpetitions for inter
`partes review filed by Petitioner challenging claims ofpatents related to the
`
`077 patent:
`
`
`
`
`
`
`
`
` .S. Patent No. 7,934,843 B2
`
`S. Patent No. 8,591,047 B2
`.S. Patent No. 8,128,244 B2
`.S. Patent No.8,267,534 B2
`.S. Patent No. 8,783,882 B2
`.S. Patent No. 8,550,642 B2
`.S. Patent No. 8,899,762 B2
`.S. Patent No. 9,694,750 B2
`
`! Petitioner, SMR Automotive Systems USA,Inc., identifies several entities
`as real parties-in-interest. Pet. 3.
`
`
`
`IPR2018-00505
`Patent 8,147,077 B2
`
`IPR2018-00931
`
`U.S. Patent No. 8,128,243 B2?
`
`Pet. 3; see also Paper4, 1.
`
`B. The ’077 Patent
`
`The ’077 patentis directed to an exterior sideview mirror. Ex. 1001,
`Abstract. The mirror includes a planoreflective element and an auxiliary
`
`reflective element mounted adjacent to each other in a side-by-side
`
`relationship. Jd. Figure 16, reproduced below,is illustrative of the mirror.
`
`3123120in
`330
`|
`314
`l Sf l/ ¥
`
`f
`
`Figure 16 of the 077 patent shows an embodiment of
`a plano reflective element assembly.
`
`As seen from above, plano-auxiliary reflective element assembly 310
`includesa first reflective element 312 and an auxiliary reflective element
`314 supported in frame assembly 316. Jd. at 15:60-63. Reflective element
`
`2 IPR2018-00913 wasnot identified by either party, but is related to this
`proceeding. IPR2018-00913, Paper 1, 3; Paper4, 1.
`
`3
`
`
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`IPR2018-00505
`Patent 8,147,077 B2
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`312 comprises a plano reflective element 350, such asa flat reflector coated
`glass substrate. Jd. at 16:20-22. Reflective element 314 comprises a
`radiused reflective element, preferably, a multiradiused reflective element
`
`355 having a multiradiused curvature. Id. at 17:45-47.
`
`C. Illustrative Claims
`
`Petitioner challenges claims 1-27 of the ’077 patent. Claims1, 17,
`and 24 are independent claims. Claim 1 is reproduced below.
`1.
`Anexterior sideview mirror system suitable for use
`on an automobile,
`said exterior
`sideview mirror
`system
`comprising:
`sideview mirror
`an exterior
`attachmentto a side of an automobile;
`
`assembly adapted for
`
`sideview mirror assembly including a
`said exterior
`reflective element having a rearward field of view when attached
`to the side of the automobile;
`said reflective element attachedto an electrically-operated
`actuator of said exterior sideview mirror assembly and movable
`by said actuator in orderto position said rearward field of view
`to a driver-desired position when said exterior sideview mirror
`assembly is attachedto the side of the automobile;
`wherein said reflective element comprises a plano-
`auxiliary reflective element assembly,
`said plano-auxiliary
`reflective element assembly comprising a plano reflective
`element having unit magnification and a separate auxiliary
`reflective element having a curvature;
`said planoreflective element andsaid auxiliary reflective
`element of said plano-auxiliary reflective element assembly
`mounted adjacently at said plano-auxiliary reflective element
`assembly in a side-by-side relationship and not superimposed
`with onereflective element on top ofthe other reflective element,
`said planoreflective element andsaid auxiliary reflective
`element supported at a backing plate element, said backingplate
`element mounting to said actuator such that movementof said
`
`4
`
`
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`IPR2018-00505
`Patent 8,147,077 B2
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`backing plate element of said plano-auxiliary reflective element
`assembly by said actuator simultaneously and similarly moves
`said plano reflective element and said auxiliary reflective
`element;
`said auxiliary reflective element having a wide-angle field
`of view encompassing a blind spot in the side lane adjacent the
`side of the automobile to which said exterior sideview mirror
`assemblyis attached;
`said backing plate element having a first support portion
`supporting said plano reflective element and a second support
`portion supporting said auxiliary reflective element;
`wherein said auxiliary reflective element is positioned at
`an outboard portion of said plano-auxiliary reflective element
`assembly when said exterior sideview mirror assembly is
`mounted to the side of the automobile;
`
`wherein said backing plate element comprises a polymeric
`substrate that is formed as a single element by injection molding
`of a polymeric resin;
`capable of
`is
`wherein said backing plate element
`supporting said plano reflective element and said auxiliary
`reflective element;
`wherein said first support portion of said backing plate
`element comprises a flat portion and wherein said plano
`reflective elementis disposedat said flat portion;
`wherein said second support portion of said backing plate
`element comprises a curved portion and wherein said auxiliary
`reflective element is disposed at said curved portion;
`wherein at least one of said plano reflective element and
`said auxiliary reflective element comprises one of (a) a glass
`substrate having a surface coated with a metallic reflector coating
`and (b) a polymeric substrate having a thin glass element applied
`to a surface thereof and with an opposing surface thereof having
`a reflecting layer applied thereto;
`wherein said plano reflective element and said auxiliary
`reflective element are adjacently supported at said backing plate
`element at a joint, and wherein said plano-auxiliary reflective
`
`5
`
`
`
`IPR2018-00505
`Patent 8,147,077 B2
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`said
`a demarcation element,
`assembly includes
`element
`demarcation element disposed atsaid joint to form a demarcation
`between said plano reflective element and said auxiliary
`reflective element, said demarcation element having a portion
`visible to a driver of the automobile when said exterior sideview
`mirror assembly is attached to the side of the automobile;
`wherein at
`least a portion of said auxiliary reflective
`element adjacent said plano reflective element has its front
`surface generally coplanar with the front surface of said plano
`reflective element;
`
`wherein said demarcation elementis dark colored;
`
`wherein said demarcation element comprises a polymer
`material;
`wherein said joint comprises a space between said plano
`reflective element and said auxiliary reflective element;
`wherein said demarcation element
`is at
`least partially
`disposed at said space betweensaid plano reflective element and
`said auxiliary reflective element;
`wherein said demarcation element comprises a wall on
`said backing plate element, said wall located on said backing
`plate elementatsaid joint, said wall disposed betweensaid plano
`reflective element and said auxiliary reflective element; and
`wherein, when said exterior sideview mirror assembly is
`attached to the side of the automobile,
`the entirety of said
`auxiliary reflective elementis further distant from the side of the
`equipped automobile than the entirety of said plano reflective
`element.
`
`Id. at 27:58—-29:22.
`
`
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`IPR2018-00505
`Patent 8,147,077 B2
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1-27 are unpatentable based on the
`following grounds (Pet. 4—5):
`
`Reference(s)
`
`.
`
`
`
`on
`
`The ’026 publication?
`The ’026 publication and
`the ’011 publication’
`Henion,> Platzer,® and
`§ 103(a)|17, 22, and 24-27
`Catlin’
`
`
`
`
`02
`mr —
`103(a)
`
`
`Challenged Claims
`
`1-17 and 20-27
`18and19
`
`
`
`Il. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, we construe claim terms in an unexpired
`patent accordingto their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Consistent with the broadest reasonable construction, claim termsare
`presumed to have their ordinary and customary meaning as understood by a
`person ofordinary skill in the art in the context of the entire patent
`
`'
`
`3 U.S. Patent Application Publication No.-2002/0072026 A1, filed Dec. 20,
`2000, published June 13, 2002 (Ex. 1011, “the ’026 publication”).
`4U.S. Patent Application Publication No. 2004/0264011 A1, filed May 5,
`2004, published Dec. 30, 2004 (Ex. 1036, “the 011 publication”).
`5 PCTInternational Publication No. WO 01/44013 A1, pub. June 21, 2001
`(Ex. 1012, “Henion”).
`© PCT International Publication No. WO 01/81956 Al, pub. Nov. 1, 2001
`(Ex. 1013, “Platzer’).
`7U.S. Patent No. 5,721,646, issued Feb. 24, 1998 (Ex. 1034, “Catlin”).
`
`7
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`Patent 8,147,077 B2
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`disclosure. In re Translogic Technology, Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007).
`
`Petitioner proposes a construction for “side-by-side.” Pet. 7-8.
`
`Patent Ownerproposesconstructions for “generally views towardsa blind
`
`spot” and “backing plate.” Prelim. Resp. 37-40, 42-46. For purposes of
`
`this decision, we need not expressly construe any claim term. See Vivid
`
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`
`(holding that “only those terms need be construed that are in controversy,
`
`and only to the extent necessary to resolve the controversy.”),; see also Nidec
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes
`
`review).
`
`B. Principles ofLaw
`To establish anticipation, each and every elementin a claim, arranged
`
`as recited in the claim, must be found in a single priorart reference.
`
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`
`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`
`Cir. 2001). Although the elements must be arranged or combinedin the
`
`same wayasin the claim,“the reference need notsatisfy an ipsissimis verbis
`
`test,” i.e., identity of terminology is not required. Jn re Gleave, 560 F.3d
`
`1331, 1334 (Fed. Cir. 2009) (accord In re Bond, 910 F.2d 831, 832 (Fed.
`
`Cir. 1990)).
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a)if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obviousat the time the
`
`invention was madeto a person having ordinary skill in the art to which said
`
`
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`IPR2018-00505
`Patent 8,147,077 B2
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousnessis resolved on the basis of underlying
`factual determinations including: (1) the scope and contentofthepriorart;
`
`(2) any differences between the claimed subject matter andthepriorart;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18
`
`(1966).
`
`C. The Level of Ordinary Skill
`
`In determiningthe level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered intheart;
`prior art solutionsto those problems; rapidity with which innovationsare
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(citation omitted). We also are mindful that the level of ordinary skill in the
`art is reflected by theprior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`Petitioner relies on the testimony of Dr. Jose Sasian, whotestifies that
`a person with ordinary skill in the art “will have hadat the time of the
`invention a M.Sc.in Optics, Optical Engineering, or similar studies in a
`related field (e.g., Physics or Mechanical Engineering) with 2-3 years of
`experience in the optics/mechanical industry.” Ex. 1002 4 18. Dr. Sasian
`furthertestifies that his description is approximate and “a higher level of
`education or skill may makeup for less experience, and vice-versa.” Id.
`Patent Ownerrelies on the testimony of Mr. Michael Nranian, who disagrees
`
`with Dr. Sasian’s assessmentandtestifies that a person with ordinaryskill in
`
`the art “would have had a MLS. in an engineering discipline relevant to
`
`
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`IPR2018-00505
`Patent 8,147,077 B2
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`automotive componentdesign(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.” Ex. 2001
`
`q 26.
`
`The levels of ordinary skill proposed by the parties differ with respect
`to work experience. Mr. Nranian’s description of the person of ordinary
`skill in the art requires that person to have had 2-3 years of experience in the
`automotive industry designing components for automobiles. Dr. Sasian’s
`description of the person of ordinary skill in the art is more flexible and
`requires the hypothetical person to have had 2-3 years of experience in the
`optics/mechanical industry. Moreover, Dr. Sasiantestifies that more
`education can take the place of less experience.
`Based onthe record before us, we determine Dr. Sasian’s description
`of a person ofordinary skill in the art to be the more accurate one. His
`description of the level ofskill in the art is more inclusive and reflective of
`the prior art of record as opposed to Mr. Nranian’s description. See, e.g., Ex.
`1001, 1:25—32 (citing U.S. Pat. Nos. 4,737,188; 4,944,581; and 5,483,386
`(none of which are directed to only automobile mirrors, but directed to
`
`mirrors in géeneral.)).
`
`D. Dr. Sasian Is Qualified To Testify
`Patent Ownerargues that Dr. Sasian’s Declaration should be accorded
`little weight because Dr. Sasian is not qualified to testify regarding what
`would have been knownto a person ofordinary skill in the art, as he does
`not have experience in the automotive industry. Prelim. Resp. 48-50.
`As explained above, we do not agree that a person having ordinary
`skill in the art at the time of the invention must have had 2-3 years of
`
`10
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`experience in the automotive industry designing components for
`automobiles. Dr. Sasian’s qualifications and experience are sufficient to
`qualify him as an expert in the pertinent field under Federal Rule of
`
`Evidence 702. See, e.g., Ex. 1002 ff 2-12.
`Patent Ownerarguesthat Dr. Sasian is a “person with an optics
`degree.” Prelim. Resp. 49. Dr. Sasian has much more experience and
`education than asserted by Patent Owner, which includes industry
`experience and involvementin projects that included automotive optics. Ex.
`1002 99 2-12. Accordingly, we determine Dr. Sasianis qualified to testify
`
`as to the matters before us.
`
`Moreover,it is within our discretion to assign the appropriate weight
`
`to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v.
`
`Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has
`discretion to give more weightto one item of evidence overanother“unless
`no reasonabletrier of fact could have done so”); In re Am. Acad. ofSci. Tech
`Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to
`weigh the declarations and concludethat the lack of factual corroboration
`warrants discounting the opinions expressed in the declarations.”); Velander
`v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weightto
`prior publications than to subsequentconclusory statements by experts, the
`Board acted well within[its] discretion.”). Based on the record beforeus,
`we are not persuadedthat we should givethe entirety of Dr. Sasian’s
`
`declaration little weight.
`
`11
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`E. 35 U.S.C. § 325(d)
`
`Overview
`
`Petitioner contends that claims 1-17 and 20-27 are unpatentable
`
`under 35 U.S.C. §§ 102(a), (b), and (e) as anticipated by the ’026
`publication. Pet. 34-49. Petitioner also contendsthat claims 18 and 19 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the °026 publication
`and the 011 publication. Jd. at 49-51.
`The ’026 publication is a United States Patent Application
`Publication, filed December 20, 2000, and published June 13, 2002. Ex.
`1011, 1. The ’026 publication lists Niall R. Lynam, John O. Lindahl, and
`Hahns Y. Fuchs as inventors. Jd. The application that issued as the °077
`patent lists Niall R. Lynam asthe sole inventor, was filed March 24, 2011,
`and contains the following benefit claims (Ex. 1001, 1):
`Division of application No. 12/851,045, filed on Aug.5, 2010,
`now Pat. No. 7,934,843, which is a continuation of application
`No. 12/197,666, filed on Aug. 25, 2008, now Pat. No.
`7,842,154, which is a division of application No. 10/709,434,
`filed on May 5, 2004, now Pat. No. 7,420,756.
`Provisional application No. 60/471,872,filed on May 20, 2003.
`Petitioner alleges that the 026 publication is prior art under 35 U.S.C.
`§ 102(b) becausethe 077 patentis not entitled to the May 20, 2003 date, but
`ratheris entitled “only to the actualfiling date of its ancestor U.S. Patent No.
`7,934,843”(“the ’843 patent”). Pet. 9. Petitioner further alleges that the
`°026 publication also is prior art under 35 U.S.C. §§ 102(a) and 102(e)
`because the °026 publication is “by another” and was published on June 13,
`2002, whichis prior to the earliest possible effective filing date of May 20,
`
`2003. Pet. 8.
`
`12
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`Patent Ownerarguesthat the issues of (1) whether the ’077 patent is
`entitled to the May 20, 2003 priority date and (2) whether the °026
`publication qualifies as prior art under 35 U.S.C. §§ 102(a) and (e) because
`it is not the work of another, were considered repeatedly during prosecution
`of the ’077 patent andits family, and, therefore, we should denyinstitution
`ofthe first two grounds under 35 U.S.C. § 325(d). Prelim. Resp. 11-17, 24—
`27. For the reasonsthat follow, we agree with Patent Ownerthatthefirst
`
`and second issues were considered by the Patent Office and exercise our
`
`discretion under 35 U.S.C. § 325(d) to decline review of the first two
`
`grounds.
`
`Prosecution of the ’843 patent and the ’077 patent
`The ’843 patent is parent to the ’077 patent andalsolists Niall R.
`Lynam asthe sole inventor. Ex. 1008, 1. The ’843 patentis nearly identical
`to the °077 patent andat least claim 1 of the ’843 patentis substantially the
`same as claim 24 of the °077 patent. Compare Ex. 1001, with Ex. 1008.8
`During prosecution of the *843 patent, and on January 13, 2011, the
`Examineralleged that the claims were not entitled to the benefit of any
`earlier filing date. Ex. 1009, 139-141. Based on thatallegation, the
`Examinerrejected claims 1-23 and 27-39 under 35 U.S.C.§ 102(b) as
`anticipated by the ’026 publication andrejected claims 24-26 under
`35 U.S.C. § 103(a) as obviousover the ’026 publication in view of the ’011
`
`publication. Jd. at 141-155.
`
`8 Per an Office Action mailed January 5, 2012, a terminal disclaimer
`“disclaiming the terminal portion of any patent granted on this application
`which would extend beyondthe expiration date” of the ’843 patent was
`accepted. Ex. 1006, 134.
`
`13
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`In response, the Applicant of the 843 patent argued that the ’026
`publication wasnotprior art under 35 U.S.C. § 102(b) because the
`application wasentitled to its earliest date of May 20, 2003, as “[t]he present
`application and eachofthe parent patent applications .
`.
`. have identical
`disclosures” and “incorporate by reference U.S. Patent Nos. 6,522,451 and
`
`6,717,712.” Id. at 46-49. For similar reasons, the applicant also argued that
`the 7011 publication wasnotprior art. Jd. In addition, a Declaration from
`Niall R. Lynam was submitted. Jd. at 53-56. Mr. Lynam declaredthat the
`invention of the independent claimsof the ’045 application (that matured
`into the ’843 patent) was reduced to practice prior to June 13, 2002,referring
`to U.S. Patent No. 6,522,451 as evidence of such fact.? Id. at 55.
`
`In response, the Examiner allowed the claims and indicated, among
`other things, that “Applicant has overcomethepriorart rejection and
`questions regardingpriority by filing a37 CFR 1.131 affidavit which proved
`sufficient to overcome the Lynam etal reference. The 37 CFR 1.131
`affidavit proves that Niall Lynam conceived or invented the subject matter
`disclosed in the patent application publication.” Id. at 23 (emphasis added).
`The prosecution history of the ’077 patent is similar to that of the °843
`patent. The same Examinerrejected claims 1-18 and 20-27 under 35
`U.S.C. § 102(e) as anticipated by the 026 publication instead of under 35
`U.S.C. § 102(b). Ex. 1006, 134-150. Nonetheless, the Applicant responded
`with nearly identical arguments, such as why the application was entitled to
`its earliest date of May 20, 2003 as“the present application and each of the
`
`9 U.S. Patent No. 6,522,451 is the parent to U.S. Patent No. 6,717,712. See
`Ex. 1017. The publication of the application that maturedinto the 6,717,712
`patent is the ’026 publication. Seeid.
`
`14
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`priority applications incorporate by reference” U.S. Patent Nos. 6,522,451
`and 6,717,712. Jd. at 155-157. In addition, a Declaration from Niall R.
`
`Lynam was submitted similar to the one submitted during prosecution of the
`°843 patent. Id. at 159-162. In response, the Examiner allowedthe claims.
`
`Id. at 249.
`
`Discussion:
`
`Petitioner asserts that the 077 patent is entitled to the filing date of
`
`the ’843 patent, but is not entitled to the filing date of U.S. Patent
`Application No. 12/197,666 (Ex. 1014 (“the ’666 application”)), because the
`°666 application does not provide written description support for the claims
`of the °077 patent. Pet. 9. Although Petitioner acknowledges that this issue
`wasraised previously, Petitioner argues that the Examinerfailed to
`“determine whether the ’451 and ’712 patents were incorporatedin their
`
`entireties and whether the combined disclosures supported the claimed
`
`invention” because the “examinerdid not explain his reasoning.” Jd. at
`
`14-15, 19.
`
`In particular, Petitioner argues that a passage from the °666
`application does not incorporate by reference U.S. Patent Nos. 6,522,451
`(“the °451 patent”) and 6,717,712 (“the ’712 patent”) in their entirety to
`provide written description support for the claims in the ’077 patent. Pet.
`21-25.!° That passage, reproduced from the ’666 application,is as follows.
`Reflective element 12 may comprise an aspheric or multi-radius
`or wide angle single elementreflective element substrate. The
`reflective element 12 may provide afield ofview similarto the
`plano-auxiliary reflective element assembly disclosedin U.S.
`
`10 This is the same passage presented to the Examiner during prosecution of
`both the ’843 and ’077 patents. Ex. 1006, 156; Ex. 1009, 46.
`
`15
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`Pat. Nos. 6,522,451 and 6,717,712, which are hereby
`incorporated herein by reference.
`
`Ex. 1014 ¢ 28 (emphasis added).
`Petitioner argues that the above passage is a description of
`
`incorporating only the “field of view” aspect from the ’451 and °712 patents
`applicable to the one-piece reflective element 12 described in the °666
`application. Pet. 22-23. Petitioner argues that, by contrast, when Patent
`Ownerintended to incorporate a reference into the ’666 application in its
`entirety, Patent Ownersaid so.
`/d. at 23 (citing Ex. 1014 {¥ 1, 45, 46).
`Patent Ownerargues that because the Office considered the issue of
`whetherthe ’077 patent and otherpatentsin the same familyare entitled to
`claim priority to provisional application No. 60/471,872, we should exercise
`discretion to not consider such arguments again. Prelim. Resp. 11, 14-17.
`Specifically, Patent Owner argues that the 026 publication “is not priorart
`to the ‘077 patent and the question has been considered eighttimes, by two
`different examiners.” Jd. at 17. Moreover, Patent Ownerargues that the
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`Examinerdid not err in determining that the °666 application incorporates
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`the °451 and ’712 patentsin their entirety. Jd.
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`Institution of an inter partes review is discretionary. See Harmonic
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`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining
`that under § 314(a), “the PTO is permitted, but never compelled,to institute
`an IPR proceeding”). Moreover, 35 U.S.C. § 325(d) states, in relevant part,
`that “[i]n determining whetherto institute or order a proceeding underthis
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the sameor substantially
`the sameprior art or arguments previously were presented to the Office.”
`
`16
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`
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`IPR2018-00505
`Patent 8,147,077 B2
`
`Wehave considered the prosecution history of both the ’843 patent
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`and the ’077 patent and determinethat the issue of whether the ’077 patentis
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`entitled to its earliest effective filing date was considered previously by the
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`Office. Indeed, Petitioner appears to acknowledge as much. See, e.g., Pet.
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`14-15. Moreover, Petitioner has not presented further sufficient evidence
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`here that would persuadeus to reacha different conclusion from the
`Examiner’s position that the challenged claims are adequately disclosed in
`the priority applications. In particular, we disagree with Petitionerthat the
`above passage from the ’666 application incorporates only the “field of
`view”aspect from the ’451 and ’712 patents applicable to the one piece
`reflective element 12 described in the 666 application. As Patent Owner
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`points out (Prelim. Resp. 18-20), the passage is subjectto at least one
`additional interpretation, and we tend to agree with Patent Ownerthatits
`understanding ofthe passageis the correct one, especially in light of Harari
`v. Lee, 656 F.3d 1331, 1335-36 (Fed. Cir. 2011) (explaining that broad and
`unequivocallanguage ofa first clause incorporatesthe entire disclosures of
`the two applications and that a second clause’s narrower languagedid not
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`diminish the scope ofthe earlier incorporation).
`Moreover, weare not persuaded by Petitioner’s arguments that, even
`if the °712 and ’451 patents were incorporatedin their entireties, the °666
`application lacks written description support for the ’077 patent’s claims.
`Pet. 26-32. Presumptively, the Examiner who examinedboth the 843
`patent application and the °077 patent application considered whetherthe
`’666 application provides written description support for the °077 patent’s
`claimsas part of determining that the ’077 patent gets the benefit ofits
`
`17
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`
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`IPR2018-00505
`Patent 8,147,077 B2
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`earliest filing date. See, e.g, Ex. 1009, 21-23.'! And wefind persuasive
`Patent Owner’s arguments (Prelim, Resp. 20-24)that “the text from the °451
`and °712 patents that is in the 666 application through the incorporation by
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`reference defines the invention more broadly”than is characterized by
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`Petitioner. Accordingly, Petitioner has not shown the Examiner erred. For
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`all of these reasons, we determinethat the issue of whether the ’026
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`publication is prior art under 35 U.S.C. § 102(b) was considered extensively
`by the Office and that Petitioner has failed to sufficiently show errorin the
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`Office’s previous determinations.
`Wenext consider Petitioner’s arguments that even if the °077 patentis
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`entitled to the May 20, 2003, date of the °872 provisional application, the
`’026 publication qualifies as prior art under 35 U.S.C. §§ 102(a) and (e)
`because the ’026 publication is “by another”—it namesthree inventors,
`whereas the 077 patent namesa sole inventor. Pet. 8. Petitioner arguesthat
`during prosecution of the ’077 patent, the issue of whether relevant material
`from the ’026 publication is by the same inventoras the ’077 patent, and,
`therefore, not prior art under §§ 102(a) and (e), was not raised before the
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`Office. Jd. at 15.
`
`Patent Ownerarguesthat the 026 publication is not prior art pursuant
`to §§ 102(a) and (e) becauseit is not the work of another and that the issue
`was raised previously before the Office. Prelim. Resp. 25. In particular,
`Patent Ownerarguesthat the declaration of Dr. Lynam submitted by Patent
`Ownerduring prosecutionofthe ’077 patentis “sufficient to show that
`
`'! By indicating that the affidavit overcamethe ’026 publication as priorart,
`the Examinerimplicitly agreed that the applicant had shownsufficiently that
`the claims wereentitled to the provisional priority date of May 20, 2003.
`
`18
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`IPR2018-00505
`Patent 8,147,077 B2
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`Lynam ’026 wasnot the work of another because the co-inventorslisted in
`Lynam °026 werenot involved in the conception of the subject matter of the
`°077 patent claims, which were solely conceived of by Dr. Lynam.” Id.at
`25-26. Patent Owneralso argues that during prosecution of the ’843 patent,
`the Examinerdetermined that the 7026 publication was not prior art because
`it was not the work of another. /d. at 14-15.
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`_
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`Wehaveconsidered the prosecution history of both the ’843 patent
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`and the °077 patent along with the Lynam Declarationsfiled in those cases
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`and determinethat the issue of whether the 026 publicationis priorart
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`under 35 U.S.C. §§ 102(a) and (e) was considered by the Office. During
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`prosecution of the ’843 patent, the Examiner considered the Lynam
`Declaration and determined that the declaration “proves that Niall Lynam
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`conceived or invented the subject matter disclosed in the patent application
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`publication.” Ex. 1009, 23 (emphasis added). The same Examiner
`considered a similar Lynam Declaration during the ’077 application and
`concludedthat the Declaration “‘is sufficient to overcome the Lynametal
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`US 2002/0072026 reference” presumably for at least the same reasons
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`articulated in the 843 patent, that Lynam conceivedor invented the subject
`matter disclosed in the patent application publication, e.g., the °026
`publication. Ex. 1006, 249. For these reasons, we disagree with Petitioner
`that the Office did not previously consider the issue of whether the ’026
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`publication is by another.
`Indeed, Petitioner does not discuss the prosecution history of the *843
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`patentat all, which we find fatal to Petitioner’s argumentthat the “same
`inventor” issue was never raised before the Office. As explained above,the
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`’843 patent is nearly identical to the ’077 patent andat least claim 1 of the
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`19
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`
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`IPR2018-00505
`Patent 8,147,077 B2
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`’843 patent is substantially the same as claim 24 of the ’077 patent.
`Compare Ex. 1001, with Ex. 1008. Moreover, Petitioner’s grounds 1 and 2
`are nearly identical to the rejections made by the Examinerduring
`prosecution of the ’843 patent. Ex. 1009, 139-150. We find the prosecution
`history of the ’843 patentrelevantto Petitioner’s assertions that the Office
`never previously considered the issue of whether the °026 publication is by
`the same inventor as the ’077 patent, and, therefore, not prior art under
`§§ 102(a) and (e). Petitioner’s silence regarding the prosecutionhistory of
`the 843 patent is an important factor in our considering whetherto institute
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`trial here.
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`Forall of the above reasons, we exercise our discretion under 35
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`U.S.C. § 325(d) and declineto institute inter partes review of claims 1-17
`and 20-27 on the groundthat those claims are unpatentable under 35 U.S.C.
`§§ 102(a), (b), and (e) as anticipated by the ’026 publication.
`Becausethe priority determination with respect to the 026
`publication is dispositive with respect to whetherthe later-published 011
`publication qualifies as prior art, we likewise exercise our discretion under
`§ 325(d) and declineto institute inter partes review ofclaims 18 and 19 on
`the ground that those claims are unpatentable under 35 U.S.C. § 103(a) as
`obvious over the ’026 publication and the ’011 publication.
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`F. Asserted Obviousness of Claims 17, 22, and 24-27 over
`Henion, Platzer, and Catlin
`Petitioner contends claims 17, 22, and 24—27 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over He