Paper 10
`Trials@uspto.gov
`571-272-7822 Entered: June 28, 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 IPR2018-00505
`Patent 8,147,077 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 28, 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 IPR2018-00505
`Patent 8,147,077 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`IPR2018-00505
`Patent 8,147,077 B2
`
`I. INTRODUCTION
`SMR Automotive Systems USA, Inc. (“Petitioner”)1 filed a Petition
`for inter partes review of claims 1–27 of U.S. Patent No. 8,147,077 B2
`(Ex. 1001, “the ’077 patent”). Paper 2 (“Pet.”). Magna Mirrors of America,
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). Institution of an inter partes review is authorized by statute when
`“the information presented in the petition . . . and any response . . . shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims 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 1–27 of the ’077 patent.
`
`A. Related Matters
`The parties indicate that the ’077 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
`’077 patent:
`IPR2018-00491
`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. 3.
`
`U.S. Patent No. 7,934,843 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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`IPR2018-00505
`Patent 8,147,077 B2
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`IPR2018-00931
`
`U.S. Patent No. 8,128,243 B22
`
`Pet. 3; see also Paper 4, 1.
`
`B. The ’077 Patent
`The ’077 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 ’077 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 IPR2018-00913 was not identified by either party, but is related to this
`proceeding. IPR2018-00913, Paper 1, 3; Paper 4, 1.
`3
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`IPR2018-00505
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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 1–27 of the ’077 patent. Claims 1, 17,
`and 24 are independent claims. Claim 1 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
`
`4
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`IPR2018-00505
`Patent 8,147,077 B2
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`backing plate element of said plano-auxiliary reflective element
`assembly by said actuator simultaneously and similarly moves
`said plano reflective element and said auxiliary reflective
`element;
`said auxiliary reflective element having a wide-angle field
`of view encompassing a blind spot in the side lane adjacent the
`side of the automobile to which said exterior sideview mirror
`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 at least one of said plano reflective element and
`said auxiliary reflective element comprises one of (a) a glass
`substrate having a surface coated with a metallic reflector coating
`and (b) a polymeric substrate having a thin glass element applied
`to a surface thereof and with an opposing surface thereof having
`a reflecting layer applied thereto;
`wherein said plano reflective element and said auxiliary
`reflective element are adjacently supported at said backing plate
`element at a joint, and wherein said plano-auxiliary reflective
`
`5
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`IPR2018-00505
`Patent 8,147,077 B2
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`includes a demarcation element, said
`element assembly
`demarcation element disposed at said joint to form a demarcation
`between said plano reflective element and said auxiliary
`reflective element, said demarcation element having a portion
`visible to a driver of the automobile when said exterior sideview
`mirror assembly is attached to the side of the automobile;
`wherein at least a portion of said auxiliary reflective
`element adjacent said plano reflective element has its front
`surface generally coplanar with the front surface of said plano
`reflective element;
`wherein said demarcation element is dark colored;
`wherein said demarcation element comprises a polymer
`material;
`wherein said joint comprises a space between said plano
`reflective element and said auxiliary reflective element;
`wherein said demarcation element is at least partially
`disposed at said space between said plano reflective element and
`said auxiliary reflective element;
`wherein said demarcation element comprises a wall on
`said backing plate element, said wall located on said backing
`plate element at said joint, said wall disposed between said plano
`reflective element and said auxiliary reflective element; and
`wherein, when said exterior sideview mirror assembly is
`attached to the side of the automobile, the entirety of said
`auxiliary reflective element is further distant from the side of the
`equipped automobile than the entirety of said plano reflective
`element.
`Id. at 27:58–29:22.
`
`6
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`IPR2018-00505
`Patent 8,147,077 B2
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`Challenged Claims
`1–17 and 20–27
`18 and 19
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–27 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
`
`§ 103(a)
`
`17, 22, and 24–27
`
`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”).
`7
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`IPR2018-00505
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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. 37–40, 42–46. For purposes of
`this decision, we need not expressly construe any claim term. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(holding that “only those terms need be construed that are in controversy,
`and only to the extent necessary to resolve the controversy.”); see also Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes
`review).
`
`B. Principles 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. 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.
`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, 1:25–32 (citing U.S. Pat. Nos. 4,737,188; 4,944,581; and 5,483,386
`(none of which are directed to only automobile mirrors, but directed to
`mirrors in 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. 48–50.
`As explained above, we do not agree that a person having ordinary
`skill in the art at the time of the invention must have had 2–3 years of
`
`10
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`IPR2018-00505
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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.
`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.
`
`11
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`E. 35 U.S.C. § 325(d)
`Overview
`Petitioner contends that claims 1–17 and 20–27 are unpatentable
`under 35 U.S.C. §§ 102(a), (b), and (e) as anticipated by the ’026
`publication. Pet. 34–49. Petitioner also contends that claims 18 and 19 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the ’026 publication
`and the ’011 publication. Id. at 49–51.
`The ’026 publication is a United States Patent Application
`Publication, filed December 20, 2000, and published June 13, 2002. Ex.
`1011, 1. The ’026 publication lists Niall R. Lynam, John O. Lindahl, and
`Hahns Y. Fuchs as inventors. Id. The application that issued as the ’077
`patent lists Niall R. Lynam as the sole inventor, was filed March 24, 2011,
`and contains the following benefit claims (Ex. 1001, 1):
`Division of application No. 12/851,045, filed on Aug. 5, 2010,
`now Pat. No. 7,934,843, which is a continuation of application
`No. 12/197,666, filed on Aug. 25, 2008, now Pat. No.
`7,842,154, which is a division of application No. 10/709,434,
`filed on May 5, 2004, now Pat. No. 7,420,756.
`Provisional application No. 60/471,872, filed on May 20, 2003.
`Petitioner alleges that the ’026 publication is prior art under 35 U.S.C.
`§ 102(b) because the ’077 patent is not entitled to the May 20, 2003 date, but
`rather is entitled “only to the actual filing date of its ancestor U.S. Patent No.
`7,934,843” (“the ’843 patent”). Pet. 9. Petitioner further alleges that the
`’026 publication also is prior art under 35 U.S.C. §§ 102(a) and 102(e)
`because the ’026 publication is “by another” and was published on June 13,
`2002, which is prior to the earliest possible effective filing date of May 20,
`2003. Pet. 8.
`
`12
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`Patent Owner argues that the issues of (1) whether the ’077 patent is
`entitled to the May 20, 2003 priority date and (2) whether the ’026
`publication qualifies as prior art under 35 U.S.C. §§ 102(a) and (e) because
`it is not the work of another, were considered repeatedly during prosecution
`of the ’077 patent and its family, and, therefore, we should deny institution
`of the first two grounds under 35 U.S.C. § 325(d). Prelim. Resp. 11–17, 24–
`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 and the ’077 patent
`The ’843 patent is parent to the ’077 patent and also lists Niall R.
`Lynam as the sole inventor. Ex. 1008, 1. The ’843 patent is nearly identical
`to the ’077 patent and at least claim 1 of the ’843 patent is substantially the
`same as claim 24 of the ’077 patent. Compare Ex. 1001, with Ex. 1008.8
`During prosecution of the ’843 patent, and on January 13, 2011, the
`Examiner alleged that the claims were not entitled to the benefit of any
`earlier filing date. Ex. 1009, 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.
`
`
`8 Per an Office Action mailed January 5, 2012, a terminal disclaimer
`“disclaiming the terminal portion of any patent granted on this application
`which would extend beyond the expiration date” of the ’843 patent was
`accepted. Ex. 1006, 134.
`
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`In response, the Applicant of the ’843 patent 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 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).
`The prosecution history of the ’077 patent is similar to that of the ’843
`patent. The same Examiner rejected claims 1–18 and 20–27 under 35
`U.S.C. § 102(e) as anticipated by the ’026 publication instead of under 35
`U.S.C. § 102(b). Ex. 1006, 134–150. Nonetheless, the Applicant responded
`with nearly identical arguments, such as why the application was entitled to
`its earliest date of May 20, 2003 as “the present application and each of the
`
`
`9 U.S. Patent No. 6,522,451 is the parent to U.S. Patent No. 6,717,712. See
`Ex. 1017. The publication of the application that matured into the 6,717,712
`patent is the ’026 publication. See id.
`14
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`priority applications incorporate by reference” U.S. Patent Nos. 6,522,451
`and 6,717,712. Id. at 155–157. In addition, a Declaration from Niall R.
`Lynam was submitted similar to the one submitted during prosecution of the
`’843 patent. Id. at 159–162. In response, the Examiner allowed the claims.
`Id. at 249.
`
`
`Discussion
`Petitioner asserts that the ’077 patent is entitled to the filing date of
`the ’843 patent, but is not entitled to the filing date of U.S. Patent
`Application No. 12/197,666 (Ex. 1014 (“the ’666 application”)), because the
`’666 application does not provide written description support for the claims
`of the ’077 patent. Pet. 9. Although Petitioner acknowledges that this issue
`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.
`
`In particular, Petitioner argues that a passage from the ’666
`application does not incorporate by reference U.S. Patent Nos. 6,522,451
`(“the ’451 patent”) and 6,717,712 (“the ’712 patent”) in their entirety to
`provide written description support for the claims in the ’077 patent. Pet.
`21–25.10 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.
`
`10 This is the same passage presented to the Examiner during prosecution of
`both the ’843 and ’077 patents. Ex. 1006, 156; Ex. 1009, 46.
`15
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`Pat. Nos. 6,522,451 and 6,717,712, which are hereby
`incorporated herein by reference.
`Ex. 1014 ¶ 28 (emphasis added).
`Petitioner argues that the above passage is a description of
`incorporating only the “field of view” aspect from the ’451 and ’712 patents
`applicable to the one-piece reflective element 12 described in the ’666
`application. Pet. 22–23. Petitioner argues that, by contrast, when Patent
`Owner intended to incorporate a reference into the ’666 application in its
`entirety, Patent Owner said so. Id. at 23 (citing Ex. 1014 ¶¶ 1, 45, 46).
`Patent Owner argues that because the Office considered the issue of
`whether the ’077 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. 11, 14–17.
`Specifically, Patent Owner argues that the ’026 publication “is not prior art
`to the ‘077 patent and the question has been considered eight times, by two
`different examiners.” Id. at 17. 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.
`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.”
`
`16
`
`
`
`IPR2018-00505
`Patent 8,147,077 B2
`
`We have considered the prosecution history of both the ’843 patent
`and the ’077 patent and determine that the issue of whether the ’077 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. 18–20), 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).
`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 ’077 patent’s claims.
`Pet. 26–32. Presumptively, the Examiner who examined both the ’843
`patent application and the ’077 patent application considered whether the
`’666 application provides written description support for the ’077 patent’s
`claims as part of determining that the ’077 patent gets the benefit of its
`
`17
`
`
`
`IPR2018-00505
`Patent 8,147,077 B2
`
`earliest filing date. See, e.g., Ex. 1009, 21–23.11 And we find persuasive
`Patent Owner’s arguments (Prelim. Resp. 20–24) that “the text from the ’451
`and ’712 patents that is in the ’666 application through the incorporation by
`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 ’077 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 ’077 patent names a sole inventor. Pet. 8. Petitioner argues that
`during prosecution of the ’077 patent, the issue of whether relevant material
`from the ’026 publication is by the same inventor as the ’077 patent, and,
`therefore, not prior art under §§ 102(a) and (e), was not raised before the
`Office. Id. at 15.
`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. 25. In particular,
`Patent Owner argues that the declaration of Dr. Lynam submitted by Patent
`Owner during prosecution of the ’077 patent is “sufficient to show that
`
`
`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.
`18
`
`
`
`IPR2018-00505
`Patent 8,147,077 B2
`
`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
`’077 patent claims, which were solely conceived of by Dr. Lynam.” Id. at
`25–26. 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 14–15.
`We have considered the prosecution history of both the ’843 patent
`and the ’077 patent along with the Lynam Declarations filed in those cases
`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. 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. 1009, 23 (emphasis added). The same Examiner
`considered a similar Lynam Declaration during the ’077 application and
`concluded that the Declaration “is sufficient to overcome the Lynam et al
`US 2002/0072026 reference” presumably for at least the same reasons
`articulated in the ’843 patent, that Lynam conceived or invented the subject
`matter disclosed in the patent application publication, e.g., the ’026
`publication. Ex. 1006, 249. For these reasons, we disagree with Petitioner
`that the Office did not previously consider the issue of whether the ’026
`publication is by another.
`Indeed, Petitioner does not discuss the prosecution history of the ’843
`patent at all, which we find fatal to Petitioner’s argument that the “same
`inventor” issue was never raised before the Office. As explained above, the
`’843 patent is nearly identical to the ’077 patent and at least claim 1 of the
`
`19
`
`
`
`IPR2018-00505
`Patent 8,147,077 B2
`
`’843 patent is substantially the same as
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