Trials@uspto.gov Paper: 10
`571-272-7822 Entered: July 9, 2018
`
`
`
`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 7,934,843 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`571-272-7822 Entered: July 9, 2018
`
`
`
`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 7,934,843 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`IPR2018-00491
`Patent 7,934,843 B2
`
`I. INTRODUCTION
`SMR Automotive Systems USA, Inc. (“Petitioner”)1 filed a Petition
`for inter partes review of claims 1–39 of U.S. Patent No. 7,934,843 B2
`(Ex. 1001, “the ’843 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 challenged in the petition.” 35 U.S.C.
`§ 314(a). Upon consideration of the Petition and Preliminary Response, we
`decline to institute review of claims 1–39 of the ’843 patent.
`
`A. Related Matters
`The parties indicate that the ’843 patent is the subject of Magna
`Mirrors of America, 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 numerous other petitions for inter
`partes review filed by Petitioner challenging claims of patents related to the
`’843 patent:
`IPR2018-00505
`IPR2018-00506
`IPR2018-00517
`IPR2018-00520
`IPR2018-00533
`IPR2018-00536
`IPR2018-00541
`IPR2018-00545
`
`1 Petitioner, SMR Automotive Systems USA, Inc., identifies several entities
`as real parties-in-interest. Pet. 2–3.
`
`U.S. Patent No. 8,147,077 B2
`U.S. Patent No. 8,591,047 B2
`U.S. Patent No. 8,128,244 B2
`U.S. Patent No. 8,267,534 B2
`U.S. Patent No. 8,783,882 B2
`U.S. Patent No. 8,550,642 B2
`U.S. Patent No. 8,899,762 B2
`U.S. Patent No. 9,694,750 B2
`
`2
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`IPR2018-00491
`Patent 7,934,843 B2
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`IPR2018-00931
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`U.S. Patent No. 8,128,243 B22
`
`See Pet. 3; see also Paper 4, 1.
`
`B. The ’843 Patent
`The ’843 patent is directed to an exterior sideview mirror. Ex. 1001,
`Abstract. The mirror includes a plano reflective element and an auxiliary
`reflective element mounted adjacent to each other in a side-by-side
`relationship. Id. Figure 16, reproduced below, is illustrative of the mirror.
`
`
`
`Figure 16 of the ’843 patent shows an embodiment of
`a plano reflective element assembly.
`As seen from above, plano-auxiliary reflective element assembly 310
`
`includes a first reflective element 312 and an auxiliary reflective element
`314 supported in frame assembly 316. Id. at 15:60–63. Reflective element
`
`
`2 IPR2018-00931 was not identified by either party, but is related to this
`proceeding. IPR2018-00931, Paper 1, 3; Paper 4, 1.
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`312 comprises a plano reflective element 350, such as a flat reflector coated
`glass substrate. Id. 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 1–39 of the ’843 patent. Claim 1 is the
`sole independent claim and is reproduced below.
`1. An exterior sideview mirror system suitable for use
`on an automobile, said exterior sideview mirror system
`comprising:
`an exterior sideview mirror assembly adapted for
`attachment to a side of an automobile;
`said exterior sideview mirror assembly including a
`reflective element having a rearward field of view when attached
`to the side of the automobile;
`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;
`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 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;
`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
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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
`assembly is 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;
`wherein said backing plate element is capable of
`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 element is disposed at 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 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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`wherein angling of the rearward field of view of said
`auxiliary reflective element relative to the rearward field 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;
`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
`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.
`Id. at 27:58–29:16.
`
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`Challenged Claim(s)
`1–23 and 27–39
`1 and 24–26
`
`§ 103(a)
`
`1, 15, and 34
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–39 are unpatentable based on the
`following grounds (Pet. 4–5):
`Reference(s)
`Basis
`The ’026 publication3
`§ 102
`The ’026 publication and
`§ 103(a)
`the ’011 publication4
`Henion,5 Platzer,6 and
`Catlin7
`Henion, Platzer, Catlin,
`and Kondo8
`
`§ 103(a)
`
`33
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to 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 terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary 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”).
`4 U.S. Patent Application Publication No. 2004/0264011 A1, filed May 5,
`2004, published Dec. 30, 2004 (Ex. 1036, “the ’011 publication”).
`5 PCT International Publication No. WO 01/44013 A1, pub. June 21, 2001
`(Ex. 1012, “Henion”).
`6 PCT International Publication No. WO 01/81956 A1, pub. Nov. 1, 2001
`(Ex. 1013, “Platzer”).
`7 U.S. Patent No. 5,721,646, issued Feb. 24, 1998 (Ex. 1034, “Catlin”).
`8 U.S. Patent No. 5,793,542, issued Aug. 11, 1998 (Ex. 1035, “Kondo”).
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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 Owner proposes constructions for “generally views towards a blind
`spot” and “backing plate.” Prelim. Resp. 36–39, 41–45. 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 of Law
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art 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 combined in the
`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`test,” i.e., identity of terminology is not required. In 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 obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. 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 evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. The Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`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 the prior 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, who testifies that
`a person with ordinary skill in the art “will have had at the time of [the]
`invention a M.Sc. degree 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 ¶ 18. Dr. Sasian
`further testifies that his description is approximate and “a higher level of
`education or skill may make up for less experience, and vice-versa.” Id.
`Patent Owner relies on the testimony of Mr. Michael Nranian, who disagrees
`with Dr. Sasian’s assessment and testifies that a person with ordinary skill in
`the art “would have had a M.S. in an engineering discipline relevant to
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`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.” Ex. 2001
`¶ 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. Sasian testifies that more
`education can take the place of less experience and vice versa.
`Based on the record before us, we determine Dr. Sasian’s description
`of a person of ordinary skill in the art to be the more accurate one. His
`description of the level of skill 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, 1:24–32 (citing to U.S. Pat. Nos. 4,737,188; 4,944,581; and 5,483,386
`(none of which are directed to only automobile mirrors, but are directed to
`mirrors in general)).
`D. Dr. Sasian Is Qualified To Testify
`Patent Owner argues that Dr. Sasian’s Declaration should be accorded
`
`little weight because Dr. Sasian is not qualified to testify regarding what
`would have been known to a person of ordinary skill in the art, as he does
`not have experience in the automotive industry. Prelim. Resp. 47–49.
`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
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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 ¶¶ 2–12; Ex. 1003.
`Patent Owner argues that 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 involvement in projects that included automotive optics. Ex.
`1002 ¶¶ 2–12. Accordingly, we determine Dr. Sasian is 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 weight to one item of evidence over another “unless
`no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech
`Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to
`weigh the declarations and conclude that 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 weight to
`prior publications than to subsequent conclusory statements by experts, the
`Board acted well within [its] discretion.”). Based on the record before us,
`we are not persuaded that we should give the entirety of Dr. Sasian’s
`declaration little weight.
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`E. 35 U.S.C. § 325(d)
`Overview
`Petitioner contends that claims 1–23 and 27–39 are unpatentable
`under 35 U.S.C. §§ 102(a), (b), and (e) as anticipated by the ’026
`publication. Pet. 35–47. Petitioner also contends that claims 1 and 24–26
`are unpatentable under 35 U.S.C. § 103(a) as obvious over the ’026
`publication and the ’011 publication. Id. at 47–49.
`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. Id. The application that issued as the ’843
`patent lists Niall R. Lynam as the sole inventor, was filed August 5, 2010,
`and contains the following benefit claims (Ex. 1001, 1):
`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) because the ’843 patent is not entitled to the May 20, 2003 date, but
`rather is entitled “only to its actual filing date, August 5, 2010.” 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, which is prior to the earliest possible
`effective filing date of May 20, 2003. Pet. 8.
`Patent Owner argues that the issues of (1) whether the ’843 patent is
`entitled to the May 20, 2003 priority date and (2) whether the ’026
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`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 ’843 patent and its family, and, therefore, we should deny institution
`of the first two grounds under 35 U.S.C. § 325(d). Prelim. Resp. 10–27. For
`the reasons that follow, we agree with Patent Owner that the first 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
`The ’843 patent lists Niall R. Lynam as the sole inventor. Ex. 1001,
`1. During prosecution of the ’843 patent, and on January 13, 2011, the
`Examiner alleged that the claims were not entitled to the benefit of any
`earlier filing date. Ex. 1006, 139–141. Based on that allegation, the
`Examiner rejected claims 1–23 and 27–39 under 35 U.S.C. § 102(b) as
`anticipated by the ’026 publication and rejected claims 24–26 under
`35 U.S.C. § 103(a) as obvious over the ’026 publication in view of the ’011
`publication. Id. at 141–155.
`In response, the Applicant argued that the ’026 publication was not
`prior art under 35 U.S.C. § 102(b) because the application was entitled to its
`earliest date of May 20, 2003, as “[t]he present application and each of the
`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 ’011 publication was not
`prior art. Id. In addition, a Declaration from Niall R. Lynam was submitted.
`Id. at 53–56. Mr. Lynam declared that the invention of the independent
`claims of the ’045 application (that matured into the ’843 patent) was
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`reduced to practice prior to June 13, 2002, referring to U.S. Patent No.
`6,522,451 as evidence of such fact.9 Id. at 55.
`In response, the Examiner allowed the claims and indicated, among
`other things, that “Applicant has overcome the prior art rejection and
`questions regarding priority by filing a 37 CFR 1.131 affidavit 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. at 23 (emphasis added).
`Discussion
`
`Petitioner asserts that the ’843 patent is only entitled to its actual filing
`date (August 5, 2010) and 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 ’843 patent. Pet. 9. Although Petitioner acknowledges that this issue
`was raised previously, Petitioner argues that the Examiner failed to
`“determine whether the ’451 and ’712 patents were incorporated in their
`entireties and whether the combined disclosures supported the claimed
`invention” because the “examiner did not explain his reasoning.” Id. at
`14–15, 19–20.
`
`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
`
`
`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 matured into the 6,717,712
`patent is the ’026 publication. See id.
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`provide written description support for the claims in the ’843 patent. Pet.
`22–26.10 That passage, reproduced from the ’666 application, is as follows.
`Reflective element 12 may comprise an aspheric or multi-radius
`or wide angle single element reflective element substrate. 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).
`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. 23–24. Petitioner argues that, by contrast, when Patent
`Owner intended to incorporate a reference into the ’666 application in its
`entirety, Patent Owner said so. Id. at 24 (citing Ex. 1014 ¶¶ 1, 45, 46).
`Patent Owner argues that because the Office considered the issue of
`whether the ’843 patent and other patents in the same family are entitled to
`claim priority to provisional application No. 60/471,872, we should exercise
`discretion to not consider such arguments again. Prelim. Resp. 10, 13–16.
`Specifically, Patent Owner argues that the ’026 publication “is not prior art
`to the ‘843 patent and the question has been considered eight times, by two
`different examiners.” Id. at 16. Moreover, Patent Owner argues that the
`Examiner did not err in determining that the ’666 application incorporates
`the ’451 and ’712 patents in their entirety. Id.
`
`
`10 This is the same passage presented to the Examiner during prosecution of
`the ’843 patent. Ex. 1006, 46.
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`Institution of an inter partes review is discretionary. See Harmonic
`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 whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`We have considered the prosecution history of the ’843 patent and
`determine that the issue of whether the ’843 patent is entitled to its earliest
`effective filing date was considered previously by the Office. Indeed,
`Petitioner appears to acknowledge as much. See, e.g., Pet. 14–15.
`Moreover, Petitioner has not presented further sufficient evidence here that
`would persuade us to reach a different conclusion from the Examiner’s
`position that the challenged claims are adequately disclosed in the priority
`applications. In particular, we disagree with Petitioner that 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 points out
`(Prelim. Resp. 17–19), the passage is subject to at least one additional
`interpretation, and we tend to agree with Patent Owner that its understanding
`of the passage is the correct one, especially in light of Harari v. Lee, 656
`F.3d 1331, 1335–36 (Fed. Cir. 2011) (explaining that broad and unequivocal
`language of a first clause incorporates the entire disclosures of the two
`applications and that a second clause’s narrower language did not diminish
`the scope of the earlier incorporation).
`
`16
`
`
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`IPR2018-00491
`Patent 7,934,843 B2
`
`Moreover, we are not persuaded by Petitioner’s arguments that, even
`if the ’712 and ’451 patents were incorporated in their entireties, the ’666
`application lacks written description support for the ’843 patent’s claims.
`Pet. 26–32. Presumptively, the Examiner who examined the ’843 patent
`application considered whether the ’666 application provides written
`description support for the ’843 patent’s claims as part of determining that
`the ’843 patent gets the benefit of its earliest filing date. See, e.g., Ex. 1006,
`21–23.11 And we find persuasive Patent Owner’s arguments (Prelim. Resp.
`19–23) that “the text from the ’451 and ’712 patents that is in the ’666
`application through the incorporation by reference defines the invention
`more broadly” than is characterized by Petitioner. Accordingly, Petitioner
`has not shown the Examiner erred. For all of these reasons, we determine
`that the issue of whether the ’026 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 error in the Office’s previous determinations.
`We next consider Petitioner’s arguments that even if the ’843 patent is
`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 names three inventors,
`whereas the ’843 patent names a sole inventor. Pet. 8. Petitioner argues that
`during prosecution of the ’843 patent, the issue of whether relevant material
`from the ’026 publication is by the same inventor as the ’843 patent, and,
`
`
`11 By indicating that the affidavit overcame the ’026 publication as prior art,
`the Examiner implicitly agreed that the Applicant had shown sufficiently
`that the claims were entitled to the provisional priority date of May 20, 2003.
`17
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`IPR2018-00491
`Patent 7,934,843 B2
`
`therefore, not prior art under §§ 102(a) and (e), was not raised before the
`Office. Id. at 15–16.
`Patent Owner argues that the ’026 publication is not prior art pursuant
`to §§ 102(a) and (e) because it is not the work of another and that the issue
`was raised previously before the Office. Prelim. Resp. 24. In particular,
`Patent Owner argues that the declaration of Dr. Lynam submitted by Patent
`Owner during prosecution of the ’843 patent is “sufficient to show that
`Lynam ’026 was not the work of another because the co-inventors listed in
`Lynam ’026 were not involved in the conception of the subject matter of the
`’843 patent claims, which were solely conceived of by Dr. Lynam.” Id.
`Patent Owner also argues that, during prosecution of the ’843 patent, the
`Examiner determined that the ’026 publication was not prior art because it
`was not the work of another. Id. at 13–14.
`We have considered the prosecution history of the ’843 patent along
`with the Lynam Declaration filed in that case and determine that the issue of
`whether the ’026 publication is prior art under 35 U.S.C. §§ 102(a) and (e)
`was considered by the Office. Specifically, during prosecution of the ’843
`patent, the Examiner considered the Lynam Declaration and determined that
`the declaration “proves that Niall Lynam conceived or invented the subject
`matter disclosed in the patent application publication.” Ex. 1006, 23
`(emphasis added). Petitioner does not address this portion of the prosecution
`history in contending that the ’026 publication is prior art under 35 U.S.C.
`§§ 102(a) and (e). See Pet. 8–9, 15–16. Thus, we disagree with Petitioner
`that the Office did not previously consider the issue of whether the ’026
`publication is by another.
`
`18
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`IPR2018-00491
`Patent 7,934,843 B2
`
`Moreover, Petitioner’s grounds 1 and 2 are nearly identical to the
`rejections made by the Examiner during prosecution of the ’843 patent. Ex.
`1006, 139–150. We find this relevant to Petitioner’s assertions that the
`Office never previously considered the issue of whether the ’026 publication
`is by the same inventor as the ’843 patent, and, therefore, not prior art under
`§§ 102(a) and (e).
`For all of the above reasons, we exercise our discretion under 35
`U.S.C. § 325(d) and decline to institute inter partes review of claims 1–23
`and 27–39 on the ground that those claims are unpatentable under 35 U.S.C.
`§§ 102(a), (b), and (e) as anticipated by the ’026 publication.
`
`Because the priority determination with respect to the ’026
`publication is dispositive with respect to whether the later-published ’011
`publication qualifies as prior art, we likewise exercise our discretion under
`§ 325(d) and decline to institute inter partes review of claims 1 and 24–26
`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.
`
`F. Asserted Obviousness of Claims 1, 15, and 34 over Henion, Platzer, and
`Catlin and of Claim 33 over Henion, Platzer, Catlin, and Kondo
`Petitioner contends claims 1, 15, and 34 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Henion, Platzer, and Catlin. Pet. 49–
`71. Petitioner also contends claim 33 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Henion, Platzer, Catlin, and Kondo. Id. at 71–75.
`In support of its showing, Petitioner relies upon the testimony of Dr. Jose
`Sasian (Ex. 1002) for support. Id. at 49–75.
`
`19
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`IPR2018-00491
`Patent 7,934,843 B2
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`1. Henion
`Henion describes a side view mirror with integral lighting. Ex. 1012,
`Abstract. Petitioner’s annotated Henion Figures 2 and 3 are reproduced
`below. Pet. 54.
`
`
`
`
`
`Petitioner’s annotated Henion Figures 2 and 3 show an automotive
`exterior mirror assembly.
`As seen from the above, Henion Figures 2 and 3 show a mirror
`assembly 10 with a housing 16 pivotally supporte
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