Paper 12
`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 IPR2018-00506
`Patent 8,591,047 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 IPR2018-00506
`Patent 8,591,047 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)
`
`
`
`IPR2018-00506
`Patent 8,591,047 B2
`
`I. INTRODUCTION
`SMR Automotive Systems USA, Inc. (“Petitioner”)1 filed a Petition
`for inter partes review of claims 1–40 of U.S. Patent No. 8,591,047 B2
`(Ex. 1001, “the ’047 patent”). Paper 2 (“Pet.”). Magna Mirrors of
`America, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 8
`(“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 1–40 of the
`’047 patent.
`
`A. Related Matters
`The parties indicate that the ’047 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 5, 1. The parties also identify numerous other petitions for inter
`partes review filed by Petitioner challenging claims of patents related to the
`’047 patent:
`IPR2018-00491
`IPR2018-00505
`IPR2018-00517
`IPR2018-00520
`IPR2018-00533
`IPR2018-00536
`
`1 Petitioner, SMR Automotive Systems USA, Inc., identifies several entities
`as real parties-in-interest. Pet. 2–3.
`
`U.S. Patent No. 7,934,843 B2
`U.S. Patent No. 8,147,077 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
`
`2
`
`
`
`IPR2018-00506
`Patent 8,591,047 B2
`
`IPR2018-00541
`IPR2018-00545
`IPR2018-00931
`
`U.S. Patent No. 8,899,762 B2
`U.S. Patent No. 9,694,750 B2
`U.S. Patent No. 8,128,243 B22
`
`Pet. 3; Paper 4, 1.
`
`B. The ’047 Patent
`The ’047 patent is directed to an exterior sideview mirror. Ex. 1001,
`Abstract. The mirror includes a plano mirror element and an auxiliary
`mirror element mounted adjacent to each other. Id. Figure 16, reproduced
`below, is illustrative of the mirror.
`
`
`
` Figure 16 of the ’047 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
`
`
`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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`Patent 8,591,047 B2
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`314 supported in frame assembly 316. Id. at 15:59–64. Reflective element
`312 comprises a plano reflective element 350, such as a flat reflector coated
`glass substrate. Id. at 16:21–23. Reflective element 314 comprises a
`radiused reflective element, preferably, a multiradiused reflective element
`355 having a multiradiused curvature. Id. at 17:46–48.
`
`C. Illustrative Claims
`Petitioner challenges claims 1–40 of the ’047 patent. Claim 1, the
`sole independent claim, is reproduced below.
`1. An exterior sideview mirror assembly suitable for
`use on a vehicle, said exterior sideview mirror assembly
`comprising:
`a mirror housing;
`a mirror backing plate element;
`wherein said mirror backing plate element is movable
`within said mirror housing by an electrically-operated actuator;
`a main plano mirror element fixedly disposed at a first
`portion of said mirror backing plate element;
`said main plano mirror element having a first primary field
`of view rearward of a vehicle equipped with said exterior
`sideview mirror assembly;
`an auxiliary non-plano curved mirror element fixedly
`disposed at a second portion of said mirror backing plate
`element;
`wherein said main plano mirror element and said auxiliary
`non-plano curved mirror element are adjacently disposed at said
`mirror backing plate element in a side-by-side relationship and
`are not superimposed with one mirror element on top of the other
`mirror element;
`wherein said mirror backing plate element comprises a
`polymeric molding;
`
`4
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`IPR2018-00506
`Patent 8,591,047 B2
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`said auxiliary non-plano curved mirror element having a
`second auxiliary field of view rearward of the equipped vehicle;
`wherein said first primary field of view of said main plano
`mirror element overlaps said second auxiliary field of view of
`said auxiliary non-plano curved mirror element;
`wherein said auxiliary non-plano curved mirror element
`that is at said second portion of said mirror backing plate element
`is angled relative to said main plano mirror element that is at said
`first portion of said mirror backing plate element;
`wherein said mirror backing plate element mounts to said
`actuator such that movement of said mirror backing plate
`element by said actuator simultaneously and similarly moves
`said main plano mirror element and said auxiliary non-plano
`curved mirror element;
`wherein said main plano mirror element comprises one of
`(a) a generally flat glass substrate having a surface coated with a
`metallic reflector coating and (b) a generally flat polymeric
`substrate having a thin glass element applied to a surface thereof
`and within opposing surface thereof having a reflecting layer
`applied thereto; and
`wherein said first primary field of view of said main plano
`mirror element overlaps said second auxiliary field of view of
`said auxiliary non-plano curved mirror element by between about
`2 degrees and about 20 degrees.
`Id. at 27:38–28:18.
`
`5
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`IPR2018-00506
`Patent 8,591,047 B2
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`Basis
`§ 102
`§ 103(a)
`
`§ 103(a)
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–40 are unpatentable based on the
`following grounds (Pet. 4):
`Reference(s)
`The ’026 publication3
`The ’026 publication and
`the ’011 publication4
`Henion,5 Platzer,6
`Catlin,7 Silvestre, 8 and
`Yamabe9
`
`Challenged Claims
`1–6 and 11–40
`7–10
`
`1, 15, 16, 18–20, 22–27, 33–35,
`and 39
`
`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 French Republic Patent Application Publication No. 2,650,982, published
`Feb. 22, 1991 (Ex. 1037, “Silvestre”).
`9 U.S. Patent No. 6,984,048 B2, issued Jan. 10, 2006 (Ex. 1038, “Yamabe”).
`6
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes construction for “side-by-side.” Pet. 7. Patent
`Owner proposes constructions for “backing plate.” Prelim. Resp. 37–41.
`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
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`7
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`(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
`automotive component design (e.g., electrical engineering, mechanical
`
`8
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`IPR2018-00506
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`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, 1:34–38 (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. 43–45.
`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
`experience in the automotive industry designing components for
`
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`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. 45. 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.
`
`E. 35 U.S.C. § 325(d)
`Overview
`Petitioner contends that claims 1–6 and 11–40 are unpatentable under
`35 U.S.C. § 102(a), (b), and (e) as anticipated by the ’026 publication.
`
`10
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`Pet. 33–46. Petitioner also contends that claims 7–10 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the ’026 publication and the
`’011 publication. Id. at 46–48.
`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
`’047 patent lists Niall R. Lynam as the sole inventor, was filed
`February 25, 2013, and contains the following benefit claims (Ex. 1001, 1):
`Continuation of application No. 13/590,854, filed on Aug. 21,
`2012, which is a continuation of application No. 13/336,018,
`filed on Dec. 23, 2011, now Pat. No. 8,267,534, which is a
`continuation of application No. 12/911,274, filed on Oct. 25,
`2010, now Pat. No. 8,128,243, which is a continuation 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 ’047 patent is not entitled to the May 20, 2003, date,
`but rather is entitled “only to the actual filing date of its predecessor U.S.
`Patent No. 7,934,843” (“the ’843 patent”). Pet. 8. 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.
`
`11
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`Pet. 8.10
`Patent Owner argues that the issues of (1) whether the ’047 patent is
`entitled to the May 20, 2003 priority date and (2) whether the
`’026 publication qualifies as prior art under §§ 102(a) and (e) because it is
`not the work of another, were considered repeatedly during prosecution of
`the ’047 patent and its family, and, therefore, we should deny institution
`under 35 U.S.C. § 325(d). Prelim. Resp. 8–9, 23–27. 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 asserted grounds.
`Prosecution of the ’843 patent and the ’047 patent
`The ’843 patent is in the familial continuity chain of the ’047 patent
`and also lists Niall R. Lynam as the sole inventor. The ’843 patent is nearly
`identical to the ’047 patent and claim 1 of the ’843 patent is similar to
`claim 1 of the ’047 patent. Compare Ex. 1001, with Ex. 1008.
`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
`
`
`10 Petitioner also argues that the ’047 patent is entitled to an effective filing
`date no earlier than August 21, 2012, the actual filing date of application
`No. 13/590,854 (“the ’854 application”), because that application claims that
`the ’854 application is both a divisional and continuation of application
`No. 13/336,018. Pet. 32–33. At the top of page 33 of the Petition are two
`blank boxes, followed by a citation to Medtronic Corevalve v. Edwards
`Lifesciences, 741 F.3d 1359, 1366 (Fed. Cir. 2014). The argument appears
`incomplete, and in any event, is vague, and, thus, insufficient to prove the
`matter asserted. No analysis is provided for us to reach a conclusion that the
`’047 patent is not entitled to any earlier date.
`12
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`Examiner rejected claims 1–23 and 27–39 as anticipated by the ’026
`publication and rejected claims 24–26 as obvious over the ’026 publication
`and the ’011 publication. Id. at 141–155.
`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 “the 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.11 Id. at 55.
`In response, the Examiner allowed the claims and indicated 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 ’047 patent is similar to that of the
`’843 patent. The same Examiner rejected claims 1–6 and 11–40 under
`35 U.S.C. § 102(e) as anticipated by the ’026 publication instead of under
`
`
`11 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.
`13
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`35 U.S.C. § 102(b). Ex. 1006, 163–172. 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 priority applications incorporate by reference” U.S. Patent Nos.
`6,522,451 and 6,717,712. Id. at 208–210. In addition, a Declaration from
`Niall R. Lynam was submitted similar to the one submitted during
`prosecution of the ’843 patent. Id. at 212–214. In response, the Examiner
`allowed the claims. Id. at 378.
`
`Discussion
`Petitioner asserts that the ’047 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 ’047 patent. Pet. 8. 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
`13–14, 18.
`
`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
`
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`’047 patent. Pet. 19–23.12 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. 20–21. 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 21 (citing Ex. 1014 ¶¶ 1, 45, 46).
`Patent Owner argues that because the Office considered the issue of
`whether the ’047 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. 8, 11–14.
`Specifically, Patent Owner argues that the ’026 publication “is not prior art
`to the ‘047 patent and the question has been considered eight times, by two
`different examiners.” Id. at 14. 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. at 15.
`
`
`12 This is the same passage presented to the Examiner during prosecution of
`both the ’843 and ’047 patents. Ex. 1006, 209; Ex. 1009, 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 both the ’843 patent
`and the ’047 patent and determine that the issue of whether the ’047 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.
`13–14. 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. 15–18), 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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`Patent 8,591,047 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 ’047 patent’s claims.
`Pet. 25–32. Presumptively, the Examiner who examined both the
`’843 patent application and the ’047 patent application considered whether
`the ’666 application provides written description support for the
`’047 patent’s claims as part of determining that the ’047 patent gets the
`benefit of its earliest filing date. See, e.g., Ex. 1009, 21–23.13 And we find
`persuasive Patent Owner’s arguments (Prelim. Resp. 18–22) 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 ’047 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 ’047 patent names a sole inventor. Pet. 8. Petitioner argues that
`during prosecution of the ’047 patent, the issue of whether relevant material
`from the ’026 publication is by the same inventor as the ’047 patent, and,
`
`
`13 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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`IPR2018-00506
`Patent 8,591,047 B2
`
`therefore, not prior art under §§ 102(a) and (e), was not raised before the
`Office. Id. at 14.
`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 ’047 patent is “sufficient to show that
`Lynam ’026 was not the work of another because the co-inventors listed on
`Lynam ’026 were not involved in the conception of the subject matter of the
`’047 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 11–12.
`We have considered the prosecution history of both the ’843 patent
`and the ’047 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 ’047 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
`
`18
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`IPR2018-00506
`Patent 8,591,047 B2
`
`’026 publication. Ex. 1006, 378. 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 ’047 patent and at least claim 1 of the
`’843 patent is similar to claim 1 of the ’047 patent. Compare Ex. 1001, with
`Ex. 1008. Moreover, Petitioner’s grounds 1 and 2 are nearly identical to the
`rejections made by the Examiner during prosecution of the ’843 patent. Ex.
`1009, 139–150. We find the prosecution history of the ’843 patent 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 ’047
`patent, and, therefore, not prior art under §§ 102(a) and (e). Petitioner’s
`silence regarding the prosecution history of the ’843 patent is an important
`factor in our considering whether to institute trial here.
`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 1–6
`and 11–40 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 7–10 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.
`
`19
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`
`F. Asserted Obviousness of Claims 1, 15, 16, 18–20, 22–27, 33–35, and 39
`over Henion, Platzer, Catlin, Silvestre, and Yamabe
`Petitioner contends claims 1, 15, 16, 18–20, 22–27, 33–35, and 39 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Henion, Platzer,
`Catlin, Silvestre, and Yamabe. Pet. 48–83. In support of its showing,
`Petitioner relies upon the testimony of Dr. Jose Sasia
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