Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Inter Partes Review of:
`U.S. Patent No. 7,934,843
`Issued: May 3, 2011
`Application No.: 12/851,045
`
`)
`)
`)
`)
`
`For: Exterior Sideview Mirror System
`
`FILED VIA E2E
`
`DECLARATION OF DR. JOSE SASIAN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,934,843
`
`SMR USA
`Exhibit 1002
`Page 001
`
`

`

`
`
`TABLE OF CONTENTS
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS ............................................... 4
`
`II.
`
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED ............ 7
`
`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED
`IN THIS DECLARATION .............................................................................. 9
`
`IV. BACKGROUND LAW ................................................................................. 10
`
` Written Description ............................................................................. 10
`Incorporation By Reference ................................................................ 11
`
`Understanding Of Legal Principles Relevant To Anticipation
`And Obviousness ................................................................................. 11
`
`
`
`V.
`
`SUMMARY OF OPINIONS ......................................................................... 14
`
`VI. THE ’843 PATENT ....................................................................................... 15
`
`A.
`B.
`
`The ’843 Patent’s Disclosure .............................................................. 15
`Application For The ʼ843 Patent ......................................................... 16
`
`VII. THE ’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR CLAIM 1 OF THE ’843 PATENT .................................... 17
`
`A. A POSA Would Not Understand The ’843 Patent Family To
`Incorporate With Particularity The Two-Mirror Assembly Of
`The ’712 And ’451 Patent Family ....................................................... 23
`A POSA Would Not Understand The ’666 Application To
`Support The ’843 Patent’s Claims Even If The ’451 And ’712
`Patents Were Fully Incorporated By Reference .................................. 29
`
`B.
`
`VIII. CLAIM CONSTRUCTION .......................................................................... 40
`
`A.
`
`“side-by-side” ...................................................................................... 40
`
`IX. THE PRIOR ART AND BACKGROUND EVIDENCE.............................. 42
`
`
`
`
`
`Prior Art Relied Upon For Anticipation .............................................. 42
`Prior Art Relied Upon For Obviousness Combinations...................... 42
`1.
`U.S. Patent Application Publication No. 2004/0264011
`(“the ‘011 publication”) ............................................................ 42
`
`i
`
`SMR USA
`Exhibit 1002
`Page 002
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`International Pub. No. WO 2001/44013 (“Henion”) ................ 44
`2.
`International Pub. No. WO 2001/81956 (“Platzer”) ................. 45
`3.
`U.S. Pat. No. 5,721,646 (“Catlin”) ........................................... 46
`4.
`U.S. Pat. No. 5,793,542 (“Kondo”) .......................................... 46
`5.
`Background Evidence ......................................................................... 47
`
`X.
`
`CLAIMS 1-23 AND 27-39 OF THE ’843 PATENT ARE
`ANTICIPATED BY THE ’026 PUBLICATION ......................................... 48
`
`Claim 1 ................................................................................................ 49
`Preamble, [a], [b] Exterior sideview mirror assembly .............. 49
`[d] Plano-auxiliary assembly .................................................... 50
`[q] Reflective Element Substrates ............................................. 52
`[e], [i] Mounted adjacently and outboard ................................. 52
`[c] Electrically-operated actuator .............................................. 55
`[f] Backing plate mounted to actuator ...................................... 56
`[h], [k], [l], [m] Support portions and capable of
`supporting .................................................................................. 58
`[j] Polymeric substrate .............................................................. 60
`[g], [p] Planar and auxiliary mirror fields of view, blind
`spot ............................................................................................ 61
`[n] Different, angled rearward field of view ............................. 62
`[o] Angled second support portion ........................................... 64
`Claim 2 – Generally Coplanar ............................................................. 65
`Claims 3 and 13 – Backing Plate Partition/Wall ................................. 66
`Claims 4, 5, 6, 7, 8, 9, 10, 11, and 12 .................................................. 68
`Claim 16 .............................................................................................. 74
`Claims 17, 18, 19, 30, and 31 .............................................................. 75
`Claims 35 and 20-23............................................................................ 77
`Claim 27 .............................................................................................. 81
`Claims 14, 15, 28, 29, and 34 .............................................................. 82
`Claims 32 and 33 ................................................................................. 86
`Claims 36-39 ....................................................................................... 86
`
`XI. CLAIMS 1 AND 24-26 WOULD HAVE BEEN OBVIOUS OVER
`THE COMBINATION OF THE ’026 AND ’011 PUBLICATIONS ........... 88
`
`Claim 1 ................................................................................................ 88
`Claims 24 and 25 ................................................................................. 89
`Claim 26 .............................................................................................. 94
`
`ii
`
`SMR USA
`Exhibit 1002
`Page 003
`
`

`

`
`
` Motivation to Combine ....................................................................... 96
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`XII. CLAIMS 1, 15, AND 34 WOULD HAVE BEEN OBVIOUS OVER
`THE COMBINATION OF HENION, CATLIN, AND PLATZER ............. 99
`
`
`
`
`
`
`
`Claim 1 ................................................................................................ 99
`Preamble, [a], [b] Exterior sideview mirror assembly .............. 99
`
`[d] Plano-auxiliary assembly .................................................. 101
`[q] Reflective Element Substrates ........................................... 102
`[e] Mounted Adjacently, Side-By-Side, And Not
`Superimposed .......................................................................... 105
`[i] Auxiliary Mirror Outboard ................................................. 108
`[c] Electrically-operated actuator ............................................ 115
`[f] Backing plate mounted to actuator .................................... 117
`[h], [k], [l], [m] Support portions and capable of
`supporting ................................................................................ 120
`[j] Polymeric substrate ............................................................ 122
`[g], [p] Planar and auxiliary mirror fields of view, blind
`spot .......................................................................................... 126
`[n] Different, angled rearward field of view ........................... 128
`[o] Angled second support portion ......................................... 130
`
`Claim 15 ............................................................................................ 131
`Claim 34 ............................................................................................ 134
`
`
`
`B.
`C.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`XIII. CLAIM 33 WOULD HAVE BEEN OBVIOUS OVER HENION,
`PLATZER, CATLIN, AND KONDO ......................................................... 146
`
`XIV. CONCLUSION ............................................................................................ 149
`
`
`
`iii
`
`SMR USA
`Exhibit 1002
`Page 004
`
`

`

`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`
`
`I have been retained by SMR Automotive Systems USA Inc. (“SMR”)
`
`to provide my opinion concerning the validity of U.S. Patent No. 7,934,843 (attached
`
`to the accompanying Petition and henceforth referred to as “the ‘843 patent”) in
`
`support of SMR’s Petition for Inter Partes Review of U.S. Patent No. 7,934,843.
`
`
`
`I have extensive academic and industry experience with optical
`
`engineering. Specifically, I have over thirty years of academic and industry
`
`experience in the field of optical sciences and optical engineering in general,
`
`including optical instrumentation, optical design, and optical fabrication and
`
`testing.
`
`
`
`I am currently a full-time, tenured Professor of Optical Sciences at the
`
`College of Optical Sciences at the University of Arizona in Tucson, Arizona, a
`
`position I have held since 2002. As a professor, I teach and perform research in the
`
`field of optical design. For example, I teach my students how to design lenses and
`
`mirrors and how to think about light so that they can design useful optical systems.
`
`
`
`As part of my academic and research responsibilities I am frequently
`
`involved with the design, fabrication, and testing of optical devices. Prior to
`
`receiving tenure, I was an Associate Professor of Optical Sciences at the University
`
`of Arizona from 1995 to 2001. Prior to joining the University of Arizona faculty, I
`
`was a member of the technical staff of AT&T Bell Laboratories from 1990 to 1995.
`
`4
`
`
`SMR USA
`Exhibit 1002
`Page 005
`
`

`

`
`From 1984 to 1987, I was a Research Assistant, and from 1988 to 1990, I was a
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`Research Associate, in the Optical Sciences Center at the University of Arizona.
`
`From 1976 to 1984, I was an optician at the Institute of Astronomy at the University
`
`of Mexico.
`
`
`
`I received a Bachelor of Science degree in Physics from the University
`
`of Mexico in 1982, a Master of Science degree in Optical Sciences from the
`
`University of Arizona in 1987, and a Ph.D. degree in Optical Sciences from the
`
`University of Arizona in 1988. My research areas include optical design, fabrication,
`
`and testing of optical instruments, astronomical optics, diffractive optics, opto-
`
`mechanical design, light in gemstones, lithography optics, and light propagation.
`
`
`
`At the University of Arizona, I have taught the courses Lens Design
`
`OPTI 517 (1997-present), Introduction to Aberrations OPTI 518 (2005-present),
`
`Advanced Lens Design OPTI 595A (2008, 2012, 2017), Illumination Optics
`
`Seminar (1997-2000), Introduction to Opto-mechanics OPTI 690 (1998, 2001, 2003,
`
`2004, 2005) and Optical Shop Practices OPTI 597A (1996-present). I teach students
`
`how to design mirrors, including their field of view specifications, how to grind,
`
`polish, and test aspheric mirrors, how to mount mirrors properly so that their
`
`physical integrity is preserved under a variety of loads, and how to align mirrors. I
`
`have experience in flat, curved, and aspheric mirror fabrication and mounting, and
`
`in the chemical and vacuum deposition of reflective metals on substrates.
`
`5
`
`
`SMR USA
`Exhibit 1002
`Page 006
`
`

`

`
`
`
`
`I have directed several theses and dissertations in the areas of lens and
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`mirror design. I have lectured regarding my work, and have published, along with
`
`students and colleagues, over one hundred scientific papers in the area of optics.
`
`These include technical papers, patents, and thesis research done under my direction,
`
`related to lens and mirror design. For example, “Two-mirror telescope design with
`
`third-order coma insensitive to decenter misalignment,” “Double-curvature Surfaces
`
`in Mirror System Design,” "Four-mirror optical system for large telescopes," and
`
`"Flat-field, anastigmatic, four-mirror optical system for large telescopes."
`
`
`
`As part of my research responsibilities at the University of Arizona, I
`
`am often involved in projects that have included automotive optics, and mirrors and
`
`prism in periscopic systems.
`
`
`
`Since 1995, I have been a consultant and have provided to industry
`
`solutions to a variety of projects that include flat and curved mirrors and opto-
`
`mechanics design. I also have consulted in the area of plastic optics. I hold several
`
`patents and patent applications related to optical mirrors.
`
`
`
`I have been a topical editor and reviewer for the peer-reviewed journal
`
`Applied Optics. I am a fellow of the International Society for Optics and Photonics
`
`(SPIE), a fellow of the Optical Society of America (OSA), and a lifetime member of
`
`the Optical Society of India.
`
`6
`
`
`SMR USA
`Exhibit 1002
`Page 007
`
`

`

`
`
`
`
`I have served as a co-chair for the conferences "Novel Optical Systems:
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`Design and Optimization" (1997-2006), "Optical systems alignment, tolerancing,
`
`and verification" (2007-2017), and “International Optical Design Conference,”
`
`(2002). I have taught in Japan (2015, 2016, and 2017) the course: Advanced Lens
`
`Design: Art and Science.
`
`
`
`I have been an editor of approximately 17 published conference
`
`proceedings from SPIE. I am the author of the book, "Introduction to Aberrations in
`
`Optical Imaging Systems," by Cambridge University Press, 2013. I am named as an
`
`inventor on approximately 12 U.S. patents.
`
` My curriculum vitae, which includes a more detailed summary of my
`
`background, experience, and publications, is attached to the accompanying Petition.
`
`II.
`
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED
`
` The opinions contained in this Declaration are based on the documents
`
`I reviewed and my knowledge and professional judgment. In forming the opinions
`
`expressed in this Declaration, I reviewed the following documents:
`
`Ex. No.
`
`Description
`
`1001
`
`1003
`
`1007
`
`U.S. Patent No. 7,934,843 (“the ‘843 patent”)
`
`Curriculum Vitae of Jose Sasian
`
`U.S. Patent Application No. 12/851,045 (“the ‘045 publication”)
`
`7
`
`
`SMR USA
`Exhibit 1002
`Page 008
`
`

`

`
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1020
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1039
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`Second Amended Complaint, Magna Mirrors of America, Inc. v.
`Samvardhana Motherson Reflectec Group Holdings Ltd., et al., No.
`1:17-CV-77 (W.D. Mich., Aug. 17, 2017) “2d Am. Comp.”)
`
`U.S. Patent Application Publication No. 2002/0072026 (“the ’026
`publication”)
`
`WO 2001/44013 (“Henion”)
`
`WO 2001/81956 (“Platzer”)
`
`U.S. Patent Application No. 12/197,666 (“the 666 application”)
`
`U.S. Patent No. 7,842,154 (“the ‘154 patent”)
`
`U.S. Patent No. 6,522,451 (“the ‘451 patent”)
`
`U.S. Patent No. 6,717,712 (“the ‘712 patent”)
`
`U.S. Patent No. 7,167,294 (“the ‘294 patent”)
`
`Computer-generated document comparison showing differences in
`the ‘045 and ‘666 applications
`
`Excerpts from James Maxwell, Plastics in the Automotive Industry
`114 (Woodhead Publishing Limited 1994) (“Maxwell”)
`
`Excerpts from N. G. McCrum, C. P. Buckley, & C. B. Bucknall,
`Principles of Polymer Engineering (Oxford Science Publications 2d
`ed. 2011) (1997) (“Bucknall”)
`
`U.S. Patent No. 5,721,646 (“Catlin”)
`
`U.S. Patent No. 5,793,542 (“Kondo”)
`
`U.S. Patent Application Publication No. 2004/0264011 (“the ‘011
`app. publication”)
`
`George Platzer, The Geometry of Automotive Rearview Mirrors -
`Why Blind Zones Exist and Strategies to Overcome Them, SAE
`Technical Paper 950601 (1995)
`
`8
`
`
`SMR USA
`Exhibit 1002
`Page 009
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`NATIONAL HIGHWAY TRAFFIC SAFETY ADMINISTRATION, U.S. DEP’T
`OF TRANSPORTATION, DOC. NO. TP111V-00, LABORATORY TEST
`PROCEDURE FOR FMVSS 111 – REARVIEW MIRRORS (OTHER THAN
`SCHOOL BUSES) (October 28, 1999)
`
`1040
`
`
`
`
`
` My opinions are additionally guided by my appreciation of how a
`
`person of ordinary skill in the art would have understood the claims of the ’843
`
`patent at the relevant time. As discussed herein, in my opinion, a person of ordinary
`
`skill in the art would not have understood the claims of the ’843 patent to be
`
`described in the ’666 application. Nevertheless, because I understand that the ’843
`
`patent attempts to claim priority to the application for U.S. Patent No. 6,717,712,
`
`filed in 2003, I was also asked to consider a date of 2003 for the purpose of
`
`determining how a person or ordinary skill would have understood the claims. The
`
`choice of 2003 v. a later date did not affect my analysis of the meaning of the claim
`
`terms.
`
`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED IN
`THIS DECLARATION
`
` To analyze the level of skill in the art, I have considered the type of
`
`problems encountered in the art, prior art solutions, rapidity of innovation,
`
`sophistication of technology, and educational level of active workers in the field.
`
` The ‘843 Patent field of invention relates to side-view mirror
`
`assemblies for vehicles that include a main mirror and an auxiliary mirror. The
`
`problem addressed in the ’843 patent requires knowledge of geometrical optics,
`
`9
`
`
`SMR USA
`Exhibit 1002
`Page 010
`
`

`

`
`optical elements including flat and curved mirrors, optical specifications, alignment
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`of optics, fabrication of optics, mechanical design, and visual optics.
`
` The relevant field, therefore, is comprised of people having an
`
`engineering degree or its equivalent. In particular, a person having ordinary skill in
`
`this art (“POSA”) will have had at the time of 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. This
`
`description is approximate, and a higher level of education or skill may make up for
`
`less experience, and vice-versa, e.g., a B.S. in the above fields with 4-6 years of
`
`experience in the industry.
`
`IV. BACKGROUND LAW
`
` Written Description
`
`
`
`I understand that a patent claim has sufficient written description
`
`support in a patent application when that application (including its as-filed claims)
`
`describes the claimed invention, with all of its limitations, in a manner that is
`
`understandable to one of ordinary skill in the art and therefore shows that the
`
`inventor actually invented the invention claimed. I also understand that describing
`
`an obvious variant of the claimed invention is not sufficient. The person of ordinary
`
`skill must conclude that the application itself (including its as-filed claims) fully sets
`
`10
`
`
`SMR USA
`Exhibit 1002
`Page 011
`
`

`

`
`forth the claimed invention, by describing it in words, figures, diagrams, and the
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`like.
`
`
`
`Incorporation By Reference
`
` With respect to incorporation by reference in the context of patents and
`
`patent applications, I understand that in order for a first document to validly
`
`incorporate material by reference from a second document, the first document must
`
`state with detailed particularity what material is incorporated and identify where in
`
`the second document that material may be found. I further understand that the Board
`
`evaluates the particularity required for sufficient incorporation by reference from the
`
`point of view of a POSA: material is validly incorporated if a POSA would
`
`understand a document to sufficiently incorporate subject matter by reference.
`
` Understanding Of Legal Principles Relevant To Anticipation And
`Obviousness
`
`
`
`I understand that a prior art reference can anticipate a patent claim when
`
`the prior art’s disclosure renders the claim’s disclosure not novel. I understand that
`
`in order to anticipate a patent claim, a prior art reference must teach every element
`
`of the claim, expressly or inherently. In analyzing anticipation, I understand that it
`
`is important to consider the scope of the claims, the level of skill in the relevant art,
`
`the scope and content of the prior art, and the differences between the prior art and
`
`the claims.
`
`11
`
`
`SMR USA
`Exhibit 1002
`Page 012
`
`

`

`
`
`
`
`I understand that a prior art reference can render a patent claim obvious
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`to one of ordinary skill in the art if the differences between the subject matter set
`
`forth in the patent claim and the prior art are such that the subject matter of the claim
`
`would have been obvious at the time the claimed invention was made. In analyzing
`
`obviousness, I understand that it is important to consider the scope of the claims, the
`
`level of skill in the relevant art, the scope and content of the prior art, the differences
`
`between the prior art and the claims, and any secondary considerations.
`
`
`
`I understand that when the claimed subject matter involves combining
`
`pre-existing elements to yield no more than one would expect from such an
`
`arrangement, the combination would have been obvious. I also understand that in
`
`assessing whether a claim would have been obvious one must consider whether the
`
`claimed improvement is more than the predictable use of prior art elements
`
`according to their established functions. I understand that there need not be a precise
`
`teaching in the prior art directed to the specific subject matter of a claim because one
`
`can take account of the inferences and creative steps that a person of skill in the art
`
`would employ. I further understand that a person of ordinary skill is a person of
`
`ordinary creativity, not an automaton.
`
`
`
`I understand that obviousness cannot be based on the hindsight
`
`combination of components selectively culled from the prior art. I understand that
`
`in an obviousness analysis, neither the motivation nor the avowed purpose of the
`
`12
`
`
`SMR USA
`Exhibit 1002
`Page 013
`
`

`

`
`inventors controls the inquiry. Any need or problem known in the field at the time
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`of the invention and addressed by the patent can provide a reason for combining
`
`elements. For example, I understand that it is important to consider whether there
`
`existed at the time of the invention a known problem for which there was an obvious
`
`solution encompassed by the patent’s claims. I understand that known techniques
`
`can have obvious uses beyond their primary purposes, and that in many cases a
`
`person of ordinary skill can fit the teachings of multiple pieces of prior art together
`
`like pieces of a puzzle.
`
`
`
`I understand that, when there is a reason to solve a problem and there
`
`are a finite number of identified, predictable solutions, a person of ordinary skill has
`
`good reason to pursue the known options within his or her technical grasp. I further
`
`understand that, if this leads to the anticipated success, it is likely the product not of
`
`innovation but of ordinary skill and common sense, which bears on whether the
`
`claim would have been obvious.
`
`
`
`I understand that secondary considerations can include, for example,
`
`evidence of commercial success of the invention, evidence of a long-felt need that
`
`was solved by an invention, evidence that others copied an invention, or evidence
`
`that an invention achieved a surprising result. I further understand that such
`
`evidence must have a nexus, or causal relationship to the elements of a claim, in
`
`13
`
`
`SMR USA
`Exhibit 1002
`Page 014
`
`

`

`
`order to be relevant. I am unaware of any such secondary considerations for the ’843
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`patent.
`
`V.
`
`SUMMARY OF OPINIONS
`
` As I describe in further detail below, my opinion is that the claims of
`
`the ’843 patent, all of which are directed to an automotive exterior rear sideview
`
`mirror assembly containing a flat primary mirror and a curved auxiliary mirror, lack
`
`written description support in the application to which the ’843 patent claims priority
`
`– the ’666 application. The ’666 application is directed at a single mirror assembly
`
`rather than a two mirror assembly, but contains a brief statement of incorporation by
`
`reference relating to the ’712 patent, which discloses a two mirror assembly. As I
`
`describe herein, a POSA would not have understood this brief statement to constitute
`
`incorporation by reference of the ’712 patent’s two-mirror assembly. Further, even
`
`if the ’712 patent’s two mirror assembly were fully incorporated by reference into
`
`the ’666 application, a POSA would still not understand the ’666 application to
`
`provide sufficient written description support for a two-mirror assembly.
`
`
`
`It is also my opinion that certain claims of the ’843 patent are
`
`anticipated or rendered obvious by the prior art references disclosed herein.
`
`Specifically, it is my opinion that claims 1-23 and 27-39 are anticipated by the ’026
`
`publication; claims 1 and 24-26 are rendered obvious by the ’026 publication in
`
`combination with the ’011 publication; claims 1, 15, and 34 are rendered obvious by
`
`14
`
`
`SMR USA
`Exhibit 1002
`Page 015
`
`

`

`
`the combination of Henion, Catlin, and Platzer; and claim 33 is rendered obvious
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`over Henion, Catlin, Platzer, and Kondo.
`
`VI. THE ’843 PATENT
`
`
`
`I have reviewed the ’843 patent. The ’843 patent is entitled to an
`
`effective filing date of August 5, 2010 or later because the claims of the ’843 patent
`
`do not have written description support in the previous patent applications in the
`
`’843 patent’s family, as illustrated below.
`
`A. The ’843 Patent’s Disclosure
`
` The ’843 patent discloses a driver’s-side exterior sideview mirror
`
`system for automobiles. See, e.g., ’843 patent at 1:62-3:34 & Fig. 16. The system
`
`is comprised of an assembly containing two separate mirrors – a flat (plano-
`
`reflective) primary mirror for viewing areas rearward and sideward of the driver, and
`
`an auxiliary curved or secondary mirror providing a wide-angled field of view
`
`(“FOV”) capable of viewing into the area not covered by the primary mirror (the
`
`driver’s “blind spot”). ’843 patent at 1:62-3:34 & Figs. 11, 13-16. The primary and
`
`secondary mirrors may be at an angle relative to each other to provide the driver a
`
`wider total field of view. Id. at 1:62-3:34 & Figs. 11, 14. This angling may be
`
`accomplished by placing the primary and secondary mirrors on separate, angled
`
`portions of a molded plastic backing plate. Id. at 1:62-3:34 & Figs. 3, 6.
`
`15
`
`
`SMR USA
`Exhibit 1002
`Page 016
`
`

`

`
`
`B. Application For The ʼ843 Patent
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`
`
`I have considered the application for the ’843 patent, which I
`
`understand to be important to understanding the ’843 patent’s priority date.
`
`
`
`I understand that Magna filed the application for the ’843 patent (Appl.
`
`No. 12/851/045, the “’045 application”) on August 5, 2010. ’843 FH 1145. The
`
`application noted that it was a continuation of the application for the ’154 patent (the
`
`’666 application). ’843 FH 1145.
`
`
`
`I am informed that the specification of the ’712 patent was copied into
`
`the ’045 application.
`
`
`
`I have reviewed a computer-generated comparison of the ’045 and ’666
`
`applications showing that the majority of the ’712 patent’s specification was copied
`
`into the ’045 application that is attached as an exhibit to the petition and listed the
`
`table of materials reviewed.
`
` This incorporation of the ’712 included the ’712 patent’s disclosure of
`
`an exterior automotive rearview mirror assembly comprised of two separate mirrors,
`
`one flat and one curved, whose combined FOVs provided a greater FOV to the driver
`
`of the automobile. ’712 patent at 3:2-5:6, Figs. 3, 5, 6, and 15.
`
` This incorporated disclosure described an exterior sideview mirror
`
`system comprising two separate mirrors – the primary and auxiliary mirrors claimed
`
`by the ’843 patent.
`
`16
`
`
`SMR USA
`Exhibit 1002
`Page 017
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`
`VII. THE
`’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR CLAIM 1 OF THE ’843 PATENT
`
`
`
`I understand that the ’843 patent claims priority through the ’154 patent.
`
`I understand that therefore, the application leading to the ’154 patent (App. No.
`
`12/197,666 (the “’666 application”)) must provide written description support for
`
`the claims of the ’843 patent. Thus, throughout this discussion, I will also refer to
`
`the disclosures of the ’666 application, in addition to the patents where appropriate.
`
` Reading the ’666 application, one of ordinary skill in the art would
`
`plainly recognize that the invention disclosed is drawn to mirror assemblies that use
`
`a single reflective element. There are many cues recognizable to one of ordinary
`
`skill in the art that leads to this conclusion. Specifically, the title of the application
`
`refers to a single “reflective element.” Additionally, one of ordinary skill in the art
`
`reading the ’666 application would expect and recognize that the Summary of the
`
`Invention section of the ’666 application (¶¶ 6-17) describes general aspects of the
`
`invention as a whole, while Description of the Preferred Embodiments section (¶¶
`
`27-48) describes specific aspects of embodiments of the invention.
`
` The first sentence of the Summary of the Invention states: “The present
`
`invention provides a molded wide angle or multi-radius substrate for a reflective
`
`element.” ’666 application at ¶ 6. Consistent with the title of the application, the
`
`first sentence of the Summary of the Invention refers to a single substrate. The
`
`17
`
`
`SMR USA
`Exhibit 1002
`Page 018
`
`

`

`
`second sentence of the Summary of the Invention further makes the point, describing
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 7,934,843
`
`that the single “molded substrate” “comprises a polymeric optical resin transparent
`
`material and has a curved exterior surface, which may have a less curved/flatter or
`
`substantially flat inboard portion or surface and a more curved outboard portion or
`
`surface.” Id. Thus, the single molded substrate of the invention has two portions:
`
`one that is flatter, and one that is more curved at the outboard portion of the single
`
`substrate. See also id. at ¶ 10. These descriptions are regarding the “present
`
`invention.” Id. at ¶ 6. By contrast, other paragraphs within the Summary of the
`
`Invention refer to only to an “aspect” or “application” of the present invention. See
`
`id. at ¶¶ 7-8, 12-13. But at the end of the Summary of the Invention, the applicant
`
`against notes that “the present invention provides a molded wide angle or multi-
`
`radius single substrate for a rearview mirror assembly . . . .” Id. at ¶ 16 (emphasis
`
`added). Thus, one of ordinary skill in the art reading the ’666 application would
`
`recognize that the applicant’s invention was about mirror assemblies using a single
`
`reflective element.
`
` The embodiments of the ’666 application are also consistent with this
`
`conclusion. For example, Figure 1, described as “a perspective view of an exterior
`
`rear view mirror assembly in accordance with the present invention,” shows that
`
`reflective element 12 is of a single piece. ’666 application at ¶ 18 (emphasis added);
`
`Fig. 1. Figure 1 of the ’666 application is reproduced below.
`
`18
`
`
`SMR USA
`Exhibit 1002
`Page 019
`
`

`

`
`
`Declaration of Dr. Jos