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`Paper No. 6
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SMR AUTOMOTIVE SYSTEMS USA, INC.,
`Petitioner,
`
`v.
`
`MAGNA MIRRORS OF AMERICA, INC.,
`Patent Owner.
`
`
`Case IPR2018-00491
`Patent No. 7,934,843
`
`
`PATENT OWNER MAGNA MIRRORS OF AMERICA, INC.’S
`PRELIMINARY RESPONSE
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`
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`Case IPR2018-00491
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`TABLE OF CONTENTS
`INTRODUCTION ..................................................................................................... 1
`BACKGROUND ....................................................................................................... 2
`I.
`Magna .................................................................................................... 2
`II.
`The ‘843 Patent ..................................................................................... 3
`PETITIONER FAILS TO SHOW A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE ANTICIPATED OR OBVIOUS. ............... 9
`I.
`Legal Standards ..................................................................................... 9
`II.
`The Board Should Deny Institution On Grounds 1 And 2. ................. 10
`A. Grounds 1 and 2 Should Be Denied Because Lynam ‘026
`Is Not Prior Art, As The PTO Repeatedly Found. .................... 10
`1.
`The Prosecution History of the ‘843 Patent. .................. 11
`2.
`SMR Fails To Show Why The Board Should
`Reconsider The PTO’s Conclusion That The ‘843
`Patent Properly Claims Priority To The ‘872
`Provisional. ..................................................................... 16
`a.
`The ‘666 application incorporates by reference the
`‘451 and ‘712 patents in their entirety. ................ 16
`The Written Description Of The ‘666 Application
`Supports The Claims Of The ‘843 Patent. ........... 19
`SMR Fails To Show Why The Board Should
`Reconsider The PTO’s Conclusion That Lynam
`‘026 Is Not Prior Art. ...................................................... 23
`Grounds 1 and 2 Should Also Be Denied Because They
`Raise Inventorship Questions That Are Better Addressed
`In District Court. ....................................................................... 27
`III. Grounds 3 And 4 Should Be Denied Because SMR Has Not Shown
`That The Prior Art Discloses All Claim Limitations Or A Sufficient
`Motivation To Combine. ..................................................................... 29
`
`b.
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`3.
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`B.
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`i
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`Case IPR2018-00491
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`The Petition Improperly Incorporates By Reference The
`Sasian Declaration. ................................................................... 30
`Henion ‘013 Discloses A Trailer Towing Mirror, Not A
`Blind Spot Mirror. ..................................................................... 33
`Henion ‘013 Does Not Disclose Or Render Obvious
`Viewing Generally Towards The Blind Spot. .......................... 36
`1.
`Claim Construction ......................................................... 36
`2.
`SMR Does Not Show That Henion ‘013 Discloses A
`Reflective Element That “Generally Views Towards
`A Blind Spot” ................................................................. 40
`SMR Cannot Rely On The Adjustable Auxiliary
`Embodiment Of Henion ‘013 To Meet Claims 15 And 34
`Because It Does Not Include The Claimed “Backing
`Plate.” ........................................................................................ 40
`1.
`Claim Construction ......................................................... 41
`2.
`Henion ‘013 Does Not Disclose The Limitations Of
`Claims 15 And 34. .......................................................... 45
`SMR’s Obviousness Arguments Rely On The Unsupported
`Opinions Of Its Unqualified “Expert.” ..................................... 47
`1.
`SMR’s Expert Is Not A POSA. ...................................... 47
`2.
`SMR Fails To Show That Claims 15 and 34 Are
`Obvious. .......................................................................... 49
`SMR Fails To Show That Element 1[i] Is Obvious. ...... 51
`3.
`Kondo Does Not Disclose Or Render Obvious The Width
`Ratio Limitation Of Claim 33. .................................................. 51
`CONCLUSION ........................................................................................................ 54
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`Case IPR2018-00491
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Allergan, Inc. v. Apotex Inc.,
`754 F.3d 952 (Fed Cir. 2014) ............................................................................. 24
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00358, Paper 9 (PTAB July 2, 2015) .................................................. 32
`Ariad Pharm., Inc. v. Eli Lily & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) .......................................................... 19
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .................................................................... 18, 19
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ............................................. 32
`Cultec, Inc. v. Stormtech LLC,
`IPR2017-00777, Paper 7 (PTAB Aug. 22, 2017) ............................................... 10
`Harari v. Lee,
`656 F.3d 1331 (Fed. Cir. 2011) .............................................................. 16, 17, 18
`Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc.,
`IPR2015-00616, Paper 9 (PTAB Aug. 17, 2015) ........................................... 9, 30
`Hospira, Inc. v. Genentech, Inc.,
`IPR2017-00739, Paper 16 (PTAB July 27, 2017) .............................................. 10
`Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd.,
`838 F.3d 1236 (Fed. Cir. 2016) .................................................................... 18, 19
`Johns Manville Corp. v. Knauf Insulation Inc.,
`IPR 2015-01633 .................................................................................................. 50
`In re Katz,
`687 F.2d 450 (C.C.P.A. 1982) ............................................................................ 24
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`Case IPR2018-00491
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`Modine Mfg. Co. v. ITC,
`75 F.3d 1545 (Fed. Cir. 1996), abrogated by Festo Corp. v.
`Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed.
`Cir. 2000) (en banc) ............................................................................................ 20
`In re NuVasive, Inc.,
`693 F. App’x 893 (Fed. Cir. 2017) ..................................................................... 39
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 39
`SCHOTT Gemtron Corp. v. SSW Holding Co.,
`IPR2014-00367, Paper No. 62 (PTAB May 26, 2015) ...................................... 49
`Sewall v. Walters,
`21 F.3d 411 (Fed. Cir. 1994) .............................................................................. 28
`In re Smith Int’l, Inc.,
`871 F.3d 1375 (Fed. Cir. 2017) .......................................................................... 39
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .......................................................................... 38
`Telemac Cellular Corp. v. Topp Telecom, Inc.,
`247 F.3d 1316 (Fed. Cir. 2001) .......................................................................... 20
`Unified Patents Inc. v. Berman,
`IPR2016-01571, Paper 10 (PTAB Dec. 14, 2016) ....................................... 10, 29
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .................................................................... 33, 35
`Zenon Envtl., Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) .................................................................... 18, 19
`Statutes
`35 U.S.C. § 102(a) ............................................................................................passim
`35 U.S.C. § 102(b) ................................................................................................... 23
`35 U.S.C. § 102(e) ............................................................................................passim
`35 U.S.C. § 256(b) ................................................................................................... 28
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`35 U.S.C. § 314(a) ..................................................................................................... 9
`35 U.S.C. § 325(d) ............................................................................................passim
`Other Authorities
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.108(c) ................................................................................................. 9
`MPEP 2132.01 ......................................................................................................... 24
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`Case IPR2018-00491
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`INTRODUCTION
`In accordance with 37 C.F.R. Section 42.107, patent owner Magna Mirrors
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`of America, Inc. (“Magna”) submits this preliminary response to the Petition filed
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`by SMR Automotive Systems USA, Inc. (“SMR”) requesting inter partes review
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`of claims 1-39 of U.S. Patent No. 7,934,843 (“the ‘843 patent”). Magna requests
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`that the Board deny the inter partes review as to all grounds, none of which have
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`merit.
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`SMR’s first two proposed grounds are anticipation and obviousness based
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`on U.S. Pat. Pub. No. 2002/0072026 (“Lynam ‘026”), the published application of
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`Dr. Lynam’s prior U.S. Pat. No. 6,717,712 (“the ‘712 patent”), which is
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`incorporated by reference into the ‘843 patent. But Lynam ‘026 was considered in
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`depth during the prosecution of the ‘843 patent. The PTO removed Lynam ‘026 as
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`prior art after concluding that the ‘843 patent is entitled to its claimed priority date
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`and that “Niall Lynam conceived or invented the subject matter disclosed in the
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`patent application publication.” Ex. 1006, 23 (emphasis added). Moreover, the
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`PTO reached the same conclusion regarding Lynam ‘026 during prosecution of
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`seven other patents in the ‘843 patent family. The Board should therefore deny
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`institution of the Lynam ‘026 grounds both because that application is not prior art
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`to the ‘843 patent and also, pursuant to 35 U.S.C. § 325(d), because the question of
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`whether it is prior art has been extensively considered by the PTO.
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`SMR’s remaining two grounds rely on WO 01/44013 to Henion (“Henion
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`‘013”). Henion ‘013 is directed to an entirely different application, namely, a
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`trailer towing mirror, than the inventions claimed in the ‘843 patent, which are
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`directed to exterior rearview mirror systems for improved viewing of the blind
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`spot. SMR’s attempts to address some of Henion ‘013’s deficiencies through
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`obviousness arguments completely ignore other deficiencies in Henion ‘013
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`previously raised by Magna in the co-pending district court litigation and fail to set
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`forth a sufficient reason, other than hindsight, why a person of ordinary skill would
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`have combined the references to arrive at the claimed inventions of the ‘843 patent.
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`Institution should therefore be denied on these grounds as well.
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`BACKGROUND
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`I. Magna
`Patent Owner Magna was founded in 1905 to become Donnelly Corporation
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`in the 1980s. Donnelly Corporation was acquired by Magna International in 2002
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`and became known as Magna Donnelly Corporation. In 2008, it changed its name
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`to Magna Mirrors of America, Inc. Magna is a leading supplier of mirror and
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`electronic vision systems for the automotive industry. Magna supplies products
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`that practice the ‘843 patent to automobile original equipment manufacturers
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`(“OEMs”) such as Ford, Hyundai, and Kia. These products, as well as infringing
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`products sold by SMR, have enjoyed widespread commercial success.
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`Dr. Lynam, the inventor of the ‘843 patent, was a longtime Donnelly
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`employee and is currently Magna’s Chief Technical Officer. He is a named
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`inventor on hundreds of issued U.S. Patents.
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`II. The ‘843 Patent
`The ‘843 patent’s claims generally relate to a mirror system with a main flat
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`(plano) reflective element and a separate, outboard curved auxiliary reflective
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`element on a single backing plate. This mirror system is designed to solve the
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`problem of the blind spot that a conventional, flat exterior side view mirror has in a
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`side lane adjacent to the driver. The blind spot means that a driver may not see a
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`passing vehicle in an adjacent side lane, and may therefore attempt to merge into
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`the lane when the lane is not clear of traffic. Prior to the invention of the ‘843
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`patent, the blind spot problem had existed for decades. While many proposed
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`solutions existed in the art, no blind spot solution had achieved significant
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`commercial success or widespread adoption prior to the ‘843 patent invention date.
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`See, e.g., U.S. Pat. No. 5,579,133, Ex. 2003, at 1:23-33 (noting that blind spot
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`problem “has existed in the art practically since the advent of the enclosed
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`automobile” and “[n]umerous attempts to solve this problem have been made”).
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`An exemplary depiction of the side view of a mirror subassembly (the
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`reflective elements and the backing plate) from the ‘843 patent is shown below:
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`Case IPR20 l 8-0049]
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`162'
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`l
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`in
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`cg
`/
`u
`//// ////////////
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`xxxxxxXxxXxxxxxk\xx.
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`I
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`///,
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`155’
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`An exemplary photograph of one of Magna’s complete mirror assemblies for
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`the Ford Mustang that practices the ‘843 patent can be seen here:
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`Plano reflective
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`Auxiliary reflective
`element
`. I
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`I element
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`The auxiliary reflective element is supported on the single backing plate at
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`an angle relative to the primary reflective element. More specifically, among
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`numerous other requirements, the ‘843 patent claims require that the auxiliary
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`reflective element be angled and positioned such that it “generally Views towards a
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`blind spot in the side lane” while the plano reflective element “generally views
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`rearwardly of the equipped automobile.” See Ex. 1001, Claim 1. Claim 1 is set
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`forth below (emphases added):
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`1. An exterior sideview mirror system suitable for use on
`an automobile, said exterior sideview mirror system
`comprising:
`
`[a] an exterior sideview mirror assembly adapted for
`attachment to a side of an automobile;
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`[b] said exterior sideview mirror assembly including a
`reflective element having a rearward field of view when
`attached to the side of the automobile;
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`[c] said reflective element attached to an electrically-
`operated actuator of said exterior sideview mirror
`assembly and movable by said actuator in order to
`position said rearward field of view to a driver-desired
`position when said exterior sideview mirror assembly is
`attached to the side of the automobile;
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`[d] 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;
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`[e] said plano reflective element and said 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 one reflective
`element on top of the other reflective element;
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`[f] said plano reflective element and said auxiliary
`reflective element supported at a backing plate element,
`said backing plate element mounting to said actuator
`such that movement of said 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;
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`[g] 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 assembly is attached;
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`[h] said backing plate element having a first support
`portion supporting said plano reflective element and a
`second support portion supporting said auxiliary
`reflective element;
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`[i] 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;
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`[j] wherein said backing plate element comprises a
`polymeric substrate that is formed as a single element by
`injection molding of a polymeric resin;
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`[k] wherein said backing plate element is capable of
`supporting said plano reflective element and said
`auxiliary reflective element;
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`[l] wherein said first support portion of said backing plate
`element comprises a flat portion and wherein said plano
`reflective element is disposed at said flat portion;
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`[m] 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;
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`[n] wherein the rearward field of view of said auxiliary
`reflective element is different from and angled to the
`rearward field of view of said plano reflective element
`when both are attached to said backing plate element of
`said plano-auxiliary reflective element assembly when
`said plano-auxiliary reflective element assembly is
`included in said exterior sideview mirror assembly and
`when said exterior sideview mirror assembly is attached
`to the side of the automobile;
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`[o] wherein angling of the rearward field of view of said
`auxiliary reflective element relative to the rearward field
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`Case IPR2018-00491
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`of view of said plano reflective element is achieved, at
`least in part, by an angling of said second support portion
`of said backing plate element supporting said auxiliary
`reflective element relative to said first support portion of
`said backing plate element supporting said plano
`reflective element;
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`[p] wherein, when said exterior sideview mirror assembly
`is attached to the side of the automobile, the field of view
`of said plano reflective element generally views
`rearwardly of the equipped automobile and the field of
`view of said auxiliary reflective element generally views
`towards a blind spot in the side lane adjacent the side of
`the automobile to which said exterior sideview mirror
`assembly is attached, said blind spot being generally
`outside the rearward field of view of said plano reflective
`element when said plano reflective element is viewed by
`a driver of the equipped automobile when said exterior
`sideview mirror assembly is attached to the side of the
`automobile; and
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`[q] 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.
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`Certain dependent claims, such as claim 15, provide further specificity
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`regarding the field of view of the auxiliary reflective element. Other dependent
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`claims include limitations such as a demarcation element to provide a visual
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`separation between the reflective elements, limitations specifying the composition
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`of the mirror glass, and limitations specifying the ratio between the width of the
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`primary reflective element and the auxiliary reflective element.
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`PETITIONER FAILS TO SHOW A REASONABLE LIKELIHOOD THAT
`THE CHALLENGED CLAIMS ARE ANTICIPATED OR OBVIOUS.
`Legal Standards
`For each claim challenged in its petition for inter partes review, SMR bears
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`I.
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`the burden of showing that there is a “reasonable likelihood” that it will prevail in
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`its challenge. 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). As the Board
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`has explained, the petitioner has “the burden of proof to establish that it is entitled
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`to the requested relief.” Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc.,
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`IPR2015-00616, Paper 9 at 7 (PTAB Aug. 17, 2015) (citing 37 C.F.R. § 42.20(c)).
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`As explained further below, the Board may also deny institution of inter partes
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`review for discretionary reasons, including because “the same or substantially the
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`same prior art or arguments previously were presented to the Office.” 35 U.S.C. §
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`325(d).
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`II. The Board Should Deny Institution On Grounds 1 And 2.
`A. Grounds 1 and 2 Should Be Denied Because Lynam ‘026 Is Not
`Prior Art, As The PTO Repeatedly Found.
`As demonstrated below, the PTO considered the issues raised in Grounds 1
`
`and 2 (including whether the ‘843 patent is entitled to its claimed priority date and
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`whether Lynam ‘026 qualifies as prior art) during the prosecution of the ‘843
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`patent. The PTO did the same in connection with the other patents in the family.
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`In these circumstances, the Board can and should exercise its discretion to deny
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`institution under 35 U.S.C. § 325(d). See Cultec, Inc. v. Stormtech LLC, IPR2017-
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`00777, Paper 7 at 13 (PTAB Aug. 22, 2017) (informative) (denying institution
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`under Section 325(d) because “the same or substantially the same prior art or
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`arguments as are presented in the Petition previously were presented to the
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`Office”); Hospira, Inc. v. Genentech, Inc., IPR2017-00739, Paper 16 at 17–19
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`(PTAB July 27, 2017) (informative) (denying institution under Section 325(d)
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`because the petitioner’s priority challenge was already considered by the PTO).
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`Instituting inter partes review on Grounds 1 and 2 “would not be an efficient use
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`of Board resources.” Unified Patents Inc. v. Berman, IPR2016-01571, Paper 10 at
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`12 (PTAB Dec. 14, 2016) (informative) (denying institution on certain claims
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`because “the Petition relies on the same or substantially the same prior art and
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`arguments presented previously to the Office”).
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`1.
`The Prosecution History of the ‘843 Patent.
`Dr. Lynam conceived of the inventions that were later claimed in the ‘843
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`patent sometime in 1999. He filed a patent application disclosing his claimed
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`inventions on January 6, 2000, which issued as U.S. Patent No. 6,522,451 on
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`February 18, 2003. Dr. Lynam is the sole named inventor of the ‘451 patent. On
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`December 20, 2000, he filed a continuation-in-part of the ‘451 patent, which issued
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`on April 6, 2004 as U.S. Pat. No. 6,717,712 (“the ‘712 patent”). The application
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`that issued as the ‘712 patent was published on June 13, 2002, as the Lynam ‘026
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`reference—the reference SMR relies upon in its request. The ‘712 patent names
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`two additional Donnelly employees as co-inventors, John O. Lindahl and Hahns
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`Yoachim Fuchs, due to their contribution of elements (namely, a “frame element
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`assembly”) disclosed and claimed in the ‘712 patent that are not relevant to the
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`claims of the ‘843 patent.
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`Dr. Lynam filed provisional patent application no. 60/471,872 (“the ‘872
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`provisional”), to which the ‘843 patent claims priority, on May 20, 2003. The ‘872
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`provisional disclosed an inventive composition for a mirror, which SMR refers to
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`as the “thin glass” feature. ‘872 provisional, Ex. 1021, 2:4-10; Petition, 18. The
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`‘872 provisional also disclosed a mirror assembly using the novel mirror
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`composition. E.g., id., 2:13-18. In addition, the ‘872 provisional incorporated by
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`reference a number of other Magna Donnelly patents and patent applications
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`disclosing mirrors and features that the novel mirror composition could be used
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`with, including the ‘451 patent and the ‘712 patent (id., 5:2-6) and interior
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`electrochromic mirror assemblies (id., 9:28-10:15).
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`Dr. Lynam filed U.S. Patent Application No. 12/851,045 (“the ‘045
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`application”), which later issued as the ‘843 patent, on August 5, 2010.1 Because
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`the claims in the ‘045 application included the two-element blind spot mirror
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`assembly described in the ‘451 and ‘712 patents, along with the thin glass
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`limitations from the ‘872 provisional, the ‘045 application copied material from the
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`1 Contrary to SMR’s assertion, the filing of the ‘045 application was not an attempt
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`“[t]o revive prosecution of the ‘712 patent’s abandoned family.” Petition, 12. The
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`‘045 application included discussion of the novel thin glass substrate first
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`described in the ‘872 provisional and included claim limitations directed to that
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`substrate, as well as discussion of the two-element blind spot mirror assembly
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`disclosed in the ‘451 patent that is incorporated by reference in the ‘872
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`provisional. See Ex. 1007, ¶¶ 3-17, 44-45, 89-107 (discussing thin glass and
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`related features), ¶¶ 45-88 (discussing plano-auxiliary mirror assembly and related
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`features). The ‘045 application could not have been filed as a continuation of the
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`‘451 and ‘712 patent family because those patents do not disclose the thin glass
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`substrate.
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`Case IPR2018-00491
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`‘451 and ‘712 patents that had previously been incorporated by reference directly
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`into the specification of the ‘045 application. For example, the ‘045 application
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`added figures 9-23, which had previously been included through the incorporation
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`by reference of the ‘451 and ‘712 patents.
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`During the prosecution of the ‘045 application, the PTO initially rejected the
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`pending claims on the alleged basis that they were not entitled to claim priority to
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`the ‘872 provisional. Ex. 1006, 139-40. Specifically, the PTO rejected all claims
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`other than claims 24-26 as anticipated by Lynam ‘026, the same as SMR’s first
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`invalidity ground. Id., 141-51. It also rejected claims 24-26 as obvious for the
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`same reason as SMR’s ground 2: a combination of Lynam ‘026 and the publication
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`of one of the applications that the ‘843 patent claims priority to, U.S. Pat. Appl.
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`Pub. 2004/0264011 (“Lynam ‘011”). Id., 152-55.
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`Dr. Lynam responded by explaining why the priority claim to the ‘872
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`provisional was proper, due to the incorporation by reference of the ‘451 and ‘712
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`patents in the ‘843 patent and the applications to which the ‘843 patent claims
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`priority. Id., 46-48. Additionally, Dr. Lynam submitted a declaration to explain
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`why Lynam ‘026 did not qualify as prior art. Id., 53-55.
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`In response, the PTO allowed the application that issued as the ‘843 patent.
`
`The Reasons for Allowance explained that the “Applicant has overcome the prior
`
`art rejection and questions regarding priority by filing a 37 CFR 1.131 affidavit
`
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`Case IPR2018-00491
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`which proved sufficient to overcome the Lynam et al reference. The 37 CFR 1.131
`
`affidavit proves that Niall Lynam conceived or invented the subject matter
`
`disclosed in the patent application publication.” Id., 23 (emphasis added). In other
`
`words, the Lynam ‘026 was found not to be prior art because it was not the work of
`
`another.
`
`Dr. Lynam went on to prosecute a number of additional patent applications
`
`claiming priority to the ‘843 patent and to the ‘872 provisional. Rejections over
`
`Lynam ‘026 were issued in seven of these prosecutions, as set forth in the table
`
`below. Each time (before two different examiners)2, Dr. Lynam overcame the
`
`rejections in the same manner as during the prosecution of the ‘843 patent.
`
`U.S.
`Patent
`No.
`
`Rejection
`Over Lynam
`‘026
`
`Response by Dr.
`Lynam
`Explaining
`Incorporation
`by Reference
`
`8,128,243 10/31/2011
`
`11/3/2011
`
`Affidavit by
`Dr. Lynam
`explaining
`Lynam ‘026
`is not Prior
`Art
`11/3/2011
`
`Notice of
`Allowance
`Agreeing
`with Dr.
`Lynam
`
`1/20/2012
`(Ex. 2004, 27)
`
`
`2 U.S. Pat. No. 8,783,882 was prosecuted before a different examiner than the ‘843
`
`patent and the other patents listed below. Compare Ex. 1001, cover with Ex. 1022,
`
`cover.
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`Case IPR2018-00491
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`U.S.
`Patent
`No.
`
`Rejection
`Over Lynam
`‘026
`
`Response by Dr.
`Lynam
`Explaining
`Incorporation
`by Reference
`
`(Ex. 2004, 4-
`11)
`8,128,244 11/16/2011
`(Ex. 2005, 3-
`20)
`8,147,077 1/5/2012
`(Ex. 2006, 3-
`19)
`8,267,534 5/17/2012
`(Ex. 2007, 4-7)
`
`8,550,642 4/23/2013
`(Ex. 2008, 5-7)
`
`8,591,047 8/16/2013
`(Ex. 2009, 3-
`12)
`8,783,882 12/17/2013
`(Ex. 1023, 135,
`137-50)
`
`(Ex. 2004, 15-
`18)
`11/22/2011
`(Ex. 2005, 23-
`25)
`1/6/2012
`(Ex. 2006, 22-
`24)
`5/21/2012
`(Ex. 2007, 22-
`24)
`7/17/2013
`(Ex. 2008, 21-
`23)
`8/21/2013
`(Ex. 2009, 26-
`28)
`3/17/2014
`(Ex. 1023, 179-
`80)
`
`15
`
`Affidavit by
`Dr. Lynam
`explaining
`Lynam ‘026
`is not Prior
`Art
`(Ex. 2004, 19-
`21)
`11/22/2011
`(Ex. 2005, 26-
`29)
`1/6/2012
`(Ex. 2006, 25-
`28)
`5/21/2012
`(Ex. 2007, 27-
`28)
`7/17/2013
`(Ex. 2008, 26-
`28)
`8/21/2013
`(Ex. 2009, 30-
`32)
`3/17/2014
`(Ex. 1023,
`184-86)
`
`Notice of
`Allowance
`Agreeing
`with Dr.
`Lynam
`
`1/24/2012
`(Ex. 2005, 35)
`
`2/17/2012
`(Ex. 2006, 34)
`
`8/6/2012
`(Ex. 2007, 34)
`
`9/5/2013
`(Ex. 2008, 35)
`
`9/27/2013
`(Ex. 2009, 39)
`
`6/10/2014
`(Ex. 1023,
`349-51)
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`Case IPR2018-00491
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`Accordingly, Lynam ‘026 is not prior art to the ‘843 patent and the question
`
`has been considered eight times, by two different examiners.
`
`2.
`
`SMR Fails To Show Why The Board Should Reconsider
`The PTO’s Conclusion That The ‘843 Patent Properly
`Claims Priority To The ‘872 Provisional.
`SMR focuses its priority argument on whether the application preceding the
`
`‘843 patent, the ‘666 application (Ex. 1014, which became the ‘154 patent),
`
`provides a written description of the claims, asserting that the ‘666 application
`
`does not incorporate by reference the relevant teachings of the ‘451 and ‘712
`
`patents (Petition, 22-26), and that even if it did, the written description would not
`
`support the ‘843 patent claims (Petition, 26-35). As the PTO previously
`
`determined when Dr. Lynam prosecuted the ‘843 patent, SMR’s arguments are
`
`incorrect.
`
`a.
`
`The ‘666 application incorporates by reference the
`‘451 and ‘712 patents in their entirety.
`The standard for whether material is incorporated by reference “is whether
`
`one reasonably skilled in the art would understand the application as describing
`
`with sufficient particularity the material to be incorporated,” which “is a question
`
`of law.” Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011). In this regard, an
`
`application may incorporate a reference in its entirety, and this incorporation can
`
`then be used to provide written description support. Id. at 1335, 1338 (concluding
`
`that “the entire ‘579 application disclosure was incorporated by the broad and
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`Case IPR2018-00491
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`unequivocal language: ‘The disclosures of the two applications are hereby
`
`incorporate[d] by reference’” and that therefore “the portions of the ‘579
`
`application that Harari argues provide the written description support for its claims
`
`are part of the optimized erase and write implementations” at issue).
`
`The ‘666 application includes the same type of “broad and unequivocal
`
`language” that was found to incorporate the entirety of a reference in Harari: “The
`
`reflective element 12 may provide a field of view similar to the plano-auxiliary
`
`reflective element assembly disclosed in U.S. Pat. Nos. 6,522,451 and 6,717,712,
`
`which are hereby incorporated herein by reference.” Ex. 1014, ¶ 28 (emphasis
`
`added). SMR asserts that this statement incorporates by reference only the field of
`
`view disclosed in the ‘451 and ‘712 patents (Petition, 23-24), but that argument is
`
`grammatically incorrect. The verb used in the incorporation by reference
`
`statement is “are,” which is used for a plural subject. This indicates that the
`
`subject of the incorporation by reference statement is the plural “U.S. Pat. Nos.
`
`6,522,451 and 6,717,712,” not the singular “a field of view” as SMR contends.
`
`The sentence is properly broken down into two parts: 1) a statement that reflective
`
`element 12 may provide a field of view similar to the plano-auxiliary reflective
`
`element assembly disclosed in the ‘451 and the ‘712 patents, and 2) a statement
`
`that the ‘451 and ‘712 patents are incorporated by reference.
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`Case IPR2018-00491
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`SMR points to language in the ‘666 application where a refere