Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`In re Inter Partes Review of:
`)
`
`U.S. Patent No. 8,591,047
`)
`
`Issued: November 26, 2013
`)
`
`Application No.: 13/776,091
`)
`
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`For: Exterior Sideview Mirror System
`
`FILED VIA E2E
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`DECLARATION OF DR. JOSE SASIAN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,591,047
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`SMR USA
`Exhibit 1002
`Page 001
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`TABLE OF CONTENTS
`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`I.
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED ............ 4
`II.
`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED
`IN THIS DECLARATION ............................................................................. 7
`IV. BACKGROUND LAW .................................................................................. 8
` Written Description .............................................................................. 8
`Incorporation By Reference .................................................................. 8
`
`Understanding Of Legal Principles Relevant To Anticipation
`
`And Obviousness .................................................................................. 9
`SUMMARY OF OPINIONS ........................................................................ 11
`V.
`VI. THE ’047 PATENT ...................................................................................... 12
`A.
`The ’047 Patent’s Disclosure .............................................................. 12
`B.
`Application For The ʼ843 Patent ........................................................ 13
`VII. THE ’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR THE CLAIMS OF THE ’047 PATENT ........................... 14
`A. A POSA Would Not Understand The 666 Patent Application
`To Incorporate With Particularity The Two-Mirror Assembly
`Of The ’712 And ’451 Patent Family ................................................. 21
`A POSA Would Not Understand The ’666 Application To
`Support The ’047 Patent’s Claims Even If The ’451 And ’712
`Patents Were Fully Incorporated By Reference ................................. 27
`The Claims Of The ’047 Patent Are Directed To A Two-
`Mirror System ..................................................................................... 38
`VIII. CLAIM CONSTRUCTION .......................................................................... 41
`A.
`“side-by-side” ..................................................................................... 41
`IX. THE PRIOR ART AND BACKGROUND EVIDENCE ............................. 43
`Prior Art Relied Upon For Anticipation ............................................. 43
`Prior Art Relied Upon For Obviousness Combinations ..................... 43
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`B.
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`Page 002
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`1.
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`X.
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`U.S. Patent Application Publication No. 2004/0264011
`(“the ‘011 publication”) ............................................................ 43
`International Pub. No. WO 2001/44013 (“Henion”) ............... 45
`2.
`International Pub. No. WO 2001/81956 (“Platzer”) ................ 46
`3.
`U.S. Pat. No. 5,721,646 (“Catlin”) ........................................... 47
`4.
`U.S. Pat. No. 6,984,048 (“Yamabe”) ....................................... 47
`5.
`FR 2650982 (“Silvestre”) ......................................................... 48
`6.
`Background Evidence ......................................................................... 49
`CLAIMS 1-6 AND 11-40 OF THE ’047 ARE ANTICIPATED BY
`THE ’026 PUBLICATION ......................................................................... 50
`Claim 1 ................................................................................................ 51
`Preamble, [a], [b], [h] housing and back plate ......................... 51
`
`[c] A electrically-operated actuator .......................................... 54
`
`[l] Backing plate mounted to actuator ...................................... 55
`
`[e], [i] mirror elements ............................................................. 57
`
`[m] Reflective Element Substrates ........................................... 57
`
`[d], [f] Support portions ............................................................ 58
`
`[g] Mounted adjacently ............................................................ 60
`
`[j], [k], [n] Different and overlapping rearward fields of
`
`view .......................................................................................... 63
`Claim 2: Generally flat glass substrate ............................................... 64
`Claims 3-6 ........................................................................................... 65
`Claims 11-14, 32: Mirror and second portion shapes......................... 69
`Claims 15-16 ....................................................................................... 73
`Claim 17: Tilting ................................................................................. 76
`Claims 18-28 ....................................................................................... 77
`Claim 18: Blind spot ................................................................. 77
`
`Claims 19-24: Angled ............................................................. 78
`
`Claims 25-28: Overall field of view and overlap .................... 81
`
`Claims 29 and 38: Fixed reflectance .................................................. 84
`Claim 30: Attachments ....................................................................... 85
`Claims 31, 37: Glass substrate ............................................................ 86
`Claim 33: Heater element ................................................................... 88
`Claims 34-35 – Driver-Side Assembly ............................................... 89
` Claim 36: Relative sizes ..................................................................... 90
`Claims 39-40 ....................................................................................... 90
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`XI. THE COMBINATION OF THE ’026 AND ’011 PUBLICATIONS
`WOULD HAVE RENDERED OBVIOUS CLAIMS 7-10 .......................... 91
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`Claim 1 ................................................................................................ 91
`
`Claims 7-8 ........................................................................................... 92
`
`Claim 9 ................................................................................................ 99
`
`Claim 10 ............................................................................................ 101
`
` Motivation To Combine ................................................................... 102
`XII. Claims 1, 15, 16, 18-20, 22-27, 33-34, 35, and 39 WOULD HAVE
`BEEN OBVIOUS OVER THE COMBINATION OF HENION,
`CATLIN, PLATZER, SILVESTRE, AND YAMABE .............................. 107
`Claim 1 .............................................................................................. 107
`Preamble, [a] Mirror Housing ................................................ 107
`
`[b] Backing Plate .................................................................... 108
`
`[c] Actuator ............................................................................. 110
`
`[d] Plano Mirror ...................................................................... 111
`
`[f] Auxiliary Mirror ................................................................ 114
`
`[e], [i] Rearward Field of View .............................................. 116
`
`[g] Mounted Adjacently, Side-By-Side, and Not
`
`Superimposed ......................................................................... 118
`[h] Polymeric Molding ........................................................... 121
`[j] Overlapping Fields of View .............................................. 125
`[k] Angled ............................................................................... 128
`[l] Common Actuator ............................................................. 129
`
`[m] Reflective Element Substrate .......................................... 132
`
`[n] About 2 to 20 Degree Overlap .......................................... 135
`
`Claim 15 - Less than About 20 Degrees ........................................... 145
`B.
`Claim 16 - About 15 to 50 Degrees .................................................. 150
`C.
`Claim 18 – Blind Spot ...................................................................... 154
`D.
`Claim 19 - About 0.75 to 5 Degrees ................................................. 156
`E.
`Claim 20 - Convex-Curved Substrate, Reflector Coating ................ 162
`F.
`Claim 22 - Convex-Curved Backing Plate ....................................... 164
`G.
`Claim 23 - Spherical Curvature ........................................................ 165
`H.
`Claim 24 - Spherical Backing Plate .................................................. 166
`I.
`Claim 25 - At Least About 25 Degrees ............................................ 167
`J.
`Claim 26 - Less Than About 50 Degrees ......................................... 169
`K.
`Claim 27 - About 5 to 15 Degree Overlap........................................ 170
`L.
`M. Claim 33 - Auxiliary Heater Element ............................................... 173
`N.
`Claim 34 - Driver-Side Assembly .................................................... 173
`O.
`Claim 35 - At Least About 25 Degree Field of View ....................... 174
`P.
`Claim 39 - About 5 to 15 Degree Overlap........................................ 174
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`Exhibit 1002
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`XIII. CONCLUSION ........................................................................................... 175
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`I.
`
`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`INTRODUCTION AND QUALIFICATIONS
`
`I have been retained by SMR Automotive Systems USA Inc.
`
`(“SMR”) to provide my opinion concerning the validity of U.S. Patent No.
`
`8,591,047 (attached to the accompanying Petition and henceforth referred to as
`
`“the ‘047 patent”) in support of SMR’s Petition for Inter Partes Review of U.S.
`
`Patent No. 8,591,047.
`
`
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`I have extensive academic and industry experience with optical
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`engineering. Specifically, I have over thirty years of academic and industry
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`experience in the field of optical sciences and optical engineering in general,
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`including optical instrumentation, optical design, and optical fabrication and
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`testing.
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`
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`I am currently a full-time, tenured Professor of Optical Sciences at
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`the College of Optical Sciences at the University of Arizona in Tucson, Arizona,
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`a position I have held since 2002. As a professor, I teach and perform research in
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`the field of optical design. For example, I teach my students how to design lenses
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`and mirrors and how to think about light so that they can design useful optical
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`systems.
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`
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`As part of my academic and research responsibilities I am frequently
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`involved with the design, fabrication, and testing of optical devices. Prior to
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`receiving tenure, I was an Associate Professor of Optical Sciences at the
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`Exhibit 1002
`Page 006
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`University of Arizona from 1995 to 2001. Prior to joining the University of
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`Arizona faculty, I was a member of the technical staff of AT&T Bell
`
`Laboratories from 1990 to 1995. From 1984 to 1987, I was a Research Assistant,
`
`and from 1988 to 1990, I was a Research Associate, in the Optical Sciences
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`Center at the University of Arizona. From 1976 to 1984, I was an optician at the
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`Institute of Astronomy at the University of Mexico.
`
`
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`I received a Bachelor of Science degree in Physics from the
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`University of Mexico in 1982, a Master of Science degree in Optical Sciences
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`from the University of Arizona in 1987, and a Ph.D. degree in Optical Sciences
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`from the University of Arizona in 1988. My research areas include optical design,
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`fabrication, and testing of optical instruments, astronomical optics, diffractive
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`optics, opto-mechanical design, light in gemstones, lithography optics, and light
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`propagation.
`
`
`
`At the University of Arizona, I have taught the courses Lens Design
`
`OPTI 517 (1997-present), Introduction to Aberrations OPTI 518 (2005-present),
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`Advanced Lens Design OPTI 595A (2008, 2012, 2017), Illumination Optics
`
`Seminar (1997-2000), Introduction to Opto-mechanics OPTI 690 (1998, 2001,
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`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
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`to grind, polish, and test aspheric mirrors, how to mount mirrors properly so that
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`2
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`SMR USA
`Exhibit 1002
`Page 007
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`their physical integrity is preserved under a variety of loads, and how to align
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`mirrors. I have experience in flat, curved, and aspheric mirror fabrication and
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`mounting, and in the chemical and vacuum deposition of reflective metals on
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`substrates.
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`
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`I have directed several theses and dissertations in the areas of lens
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`and mirror design. I have lectured regarding my work, and have published, along
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`with students and colleagues, over one hundred scientific papers in the area of
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`optics. These include technical papers, patents, and thesis research done under
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`my direction, related to lens and mirror design. For example, “Two-mirror
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`telescope design with third-order coma insensitive to decenter misalignment,”
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`“Double-curvature Surfaces in Mirror System Design,” "Four-mirror optical
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`system for large telescopes," and "Flat-field, anastigmatic, four-mirror optical
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`system for large telescopes."
`
`
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`As part of my research responsibilities at the University of Arizona,
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`I am often involved in projects that have included automotive optics, and mirrors
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`and prism in periscopic systems.
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`
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`Since 1995, I have been a consultant and have provided to industry
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`solutions to a variety of projects that include flat and curved mirrors and opto-
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`mechanics design. I also have consulted in the area of plastic optics. I hold
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`several patents and patent applications related to optical mirrors.
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`3
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`SMR USA
`Exhibit 1002
`Page 008
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`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
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`lifetime member of the Optical Society of India.
`
`
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`I have served as a co-chair for the conferences "Novel Optical
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`Systems: Design and Optimization" (1997-2006), "Optical systems alignment,
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`tolerancing, and verification" (2007-2017), and “International Optical Design
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`Conference,” (2002). I have taught in Japan (2014, 2016, and 2017) the course:
`
`Advanced Lens Design: Art and Science.
`
`
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`I have been an editor of approximately 17 published conference
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`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
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`as an inventor on approximately 12 U.S. patents.
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` My curriculum vitae, which includes a more detailed summary of
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`my background, experience, and publications, is attached to the accompanying
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`Petition.
`
`II.
`
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED
` The opinions contained in this Declaration are based on the
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`documents I reviewed and my knowledge and professional judgment. In forming
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`the opinions expressed in this Declaration, I reviewed the following documents:
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`Exhibit 1002
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`Ex. No.
`
`Description
`
`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`
`1001
`
`1003
`
`1008
`
`1009
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
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`1016
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`1017
`
`1020
`
`1025
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`U.S. Patent No. 8,591,047 (the “’047 patent”)
`
`Curriculum Vitae of Jose Sasian
`
`U.S. Patent No. 7,934,843 (the “’843 patent”)
`
`File History for U.S. Patent No. 7,934,843 (the “’843 FH”)
`
`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”)
`
`Computer-generated document comparison showing differences in
`the ’045 and ’666 applications
`U.S. Patent Application No. 13/776,091 (the “’091 application”)
`
`JAMES MAXWELL, PLASTICS IN THE AUTOMOTIVE INDUSTRY 114
`(Woodhead Publishing Limited 1994) (“Maxwell”)
`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
`publication”)
`Certified English Translation of French Republic Patent Application
`Publication No. 2,650,982 (“Silvestre”)
`
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`U.S. Patent No. 6,984,048 (“Yamabe”)
`
`George Platzer, The Geometry of Automotive Rearview Mirrors -
`Why Blind Zones Exist and Strategies to Overcome Them, SAE
`Technical Paper 950601 (1995)
`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)
`
` My opinions are additionally guided by my appreciation of how a
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`1038
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`1039
`
`1040
`
`
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`person of ordinary skill in the art would have understood the claims of the ’047
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`patent at the relevant times. As discussed herein, in my opinion, a person of
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`ordinary skill in the art would not have understood the claims of the ’047 patent
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`to be described in the ’666 application at the time that application was filed (the
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`2008 time frame). For whether the claims were obvious over the ’026 application,
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`I looked to the actual filing date of the ’047 patent’s application as the relevant
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`time (2010 time frame). And because I understand that the ’047 patent attempts
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`to claim priority to the application for U.S. Patent No. 6,717,712, filed in 2003, I
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`was also asked to consider that earlier time frame for the purpose of determining
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`how a person or ordinary skill would have understood the claims. The choice of
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`2003 vs. a later date did not affect my analysis.
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`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
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`problems encountered in the art, prior art solutions, rapidity of innovation,
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`sophistication of technology, and educational level of active workers in the field.
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` The '047 patent field of invention relates to side-view mirror
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`assemblies for vehicles that include a main mirror and an auxiliary mirror. The
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`problem addressed in the ’047 patent requires knowledge of geometrical optics,
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`optical elements including flat and curved mirrors, optical specifications,
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`alignment of optics, fabrication of optics, mechanical design, and visual optics.
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` The relevant field, therefore, is comprised of people having an
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`engineering degree or its equivalent. In particular, a person having ordinary skill
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`in this art (“POSA”) will have had at the time of invention a M.Sc. degree in
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`Optics, Optical Engineering, or similar studies in a related field (e.g., Physics or
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`Mechanical Engineering) with 2-3 years of experience in the optics/mechanical
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`industry. This description is approximate, and a higher level of education or skill
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`may make up for less experience, and vice-versa, e.g., a B.S. in the above fields
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`with 4-6 years of experience in the industry.
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`Exhibit 1002
`Page 012
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`IV. BACKGROUND LAW
` Written Description
`
`I understand that a patent claim has sufficient written description
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`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
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`that is understandable to one of ordinary skill in the art and therefore shows that
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`the inventor actually invented the invention claimed. I also understand that
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`describing an obvious variant of the claimed invention is not sufficient. The
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`person of ordinary skill must conclude that the application itself (including its as-
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`filed claims) fully sets forth the claimed invention, by describing it in words,
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`figures, diagrams, and the 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
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`that the Board evaluates the particularity required for sufficient incorporation by
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`reference from the point of view of a POSA: material is validly incorporated if a
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`POSA would understand a document to sufficiently incorporate subject matter by
`
`reference.
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`8
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`Exhibit 1002
`Page 013
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
` Understanding Of Legal Principles Relevant To Anticipation
`And Obviousness
`I understand that a prior art reference can anticipate a patent claim
`
`
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`when the prior art’s disclosure renders the claim’s disclosure not novel. I
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`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
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`anticipation, I understand that it is important to consider the scope of the claims,
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`the level of skill in the relevant art, the scope and content of the prior art, and the
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`differences between the prior art and the claims.
`
`
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`I understand that a prior art reference can render a patent claim
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`obvious to one of ordinary skill in the art if the differences between the subject
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`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
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`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
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`secondary considerations.
`
`
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`I understand that when the claimed subject matter involves
`
`combining pre-existing elements to yield no more than one would expect from
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`such an arrangement, the combination would have been obvious. I also
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`understand that in assessing whether a claim would have been obvious one must
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`consider whether the claimed improvement is more than the predictable use of
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`prior art elements according to their established functions. I understand that there
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`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
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`person of ordinary skill is a person of ordinary creativity, not an automaton.
`
`
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`I understand that obviousness cannot be based on the hindsight
`
`combination of components selectively culled from the prior art. I understand
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`that in an obviousness analysis, neither the motivation nor the avowed purpose of
`
`the inventors controls the inquiry. Any need or problem known in the field at the
`
`time 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
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`that in many cases a person of ordinary skill can fit the teachings of multiple
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`pieces of prior art together like pieces of a puzzle.
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`
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`I understand that, when there is a reason to solve a problem and
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`there are a finite number of identified, predictable solutions, a person of ordinary
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`skill has good reason to pursue the known options within his or her technical
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`grasp. I further understand that, if this leads to the anticipated success, it is likely
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`the product not of innovation but of ordinary skill and common sense, which
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`bears on whether the claim would have been obvious.
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`
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`I understand that secondary considerations can include, for example,
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`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
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`evidence that an invention achieved a surprising result. I further understand that
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`such evidence must have a nexus, or causal relationship to the elements of a
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`claim, in order to be relevant. I am unaware of any such secondary
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`considerations for the ’047 patent
`
`V.
`
`SUMMARY OF OPINIONS
` As I describe in further detail below, my opinion is that the claims of
`
`the ’047 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 ’047 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-
`
`11
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`Exhibit 1002
`Page 016
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`mirror assembly. Further, even if the ’712 patent’s two mirror assembly were
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`fully incorporated by reference into the ’666 application, a POSA would still not
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`understand the ’666 application to provide sufficient written description support
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`for a two-mirror assembly.
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`
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`It is also my opinion that certain claims of the ’047 patent are
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`anticipated or rendered obvious by the prior art references disclosed herein.
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`Specifically, it is my opinion that opinion that claims 1-6 and 11-40 of the ’047
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`patent are anticipated by the ’026 publication; claims 1 and 7-10 are rendered
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`obvious by the ’026 publication in combination with the ’011 publication; and
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`claims 1, 15, 16, 18-20, 22-27, 33-34, 35, and 39 would have been obvious over
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`Henion in combination with Platzer, Catlin, Silvestre, and Yamabe.
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`VI. THE ’047 PATENT
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`I have reviewed the ’047 patent. The ’047 patent is entitled to an
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`effective filing date of August 5, 2010 or later because the claims of the ’047
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`patent do not have written description support in the previous patent applications
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`in the ’047 patent’s family, as illustrated below.
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`A. The ’047 Patent’s Disclosure
` The ’047 patent discloses a driver’s-side exterior sideview mirror
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`system for automobiles. See, e.g., ’047 patent at 1:62-3:34 & Fig. 16. The
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`system is comprised of an assembly containing two separate mirrors – a flat
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`12
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`Exhibit 1002
`Page 017
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`(plano-reflective) primary mirror for viewing areas rearward and sideward of the
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`driver, and an auxiliary curved or secondary mirror providing a wide-angled field
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`of view (“FOV”) capable of viewing into the area not covered by the primary
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`mirror (the driver’s “blind spot”). ’047 patent at 1:62-3:34 & Figs. 11, 13-16.
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`The primary and secondary mirrors may be at an angle relative to each other to
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`provide the driver a wider total field of view. Id. at 1:62-3:34 & Figs. 11, 14.
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`This angling may be accomplished by placing the primary and secondary mirrors
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`on separate, angled portions of a molded plastic backing plate. Id. at 1:62-3:34 &
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`Figs.
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`B. Application For The ʼ843 Patent
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`I have considered the application for the ’843 patent. I understand
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`that the ’047 patent claims priority through the ’843 patent, which I understand to
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`be important to understanding the ’047 patent’s priority date.
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`
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`I understand that Magna filed the application for the ’843 patent
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`(Appl. No. 12/851/045, the “’045 application”) on August 5, 2010. ’843 FH
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`1145. The application noted that it was a continuation of the application for the
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`’154 patent (the ’666 application). ’843 FH 1145.
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`
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`I am informed that the specification of the ’712 patent was copied
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`into the ’045 application.
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`Exhibit 1002
`Page 018
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`I have reviewed a computer-generated comparison of the ’045 and
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`
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`’666 applications showing that the majority of the ’712 patent’s specification was
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`copied into the ’045 application that is attached as an exhibit to the petition and
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`listed the table of materials reviewed (Ex. 1020).
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` This incorporation of the ’712 included the ’712 patent’s disclosure
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`of an exterior automotive rearview mirror assembly comprised of two separate
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`mirrors, one flat and one curved, whose combined FOVs provided a greater FOV
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`to the driver of the automobile. ’712 patent at 3:2-5:6, Figs. 3, 5, 6, and 15.
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` This incorporated disclosure described an exterior sideview mirror
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`system comprising two separate mirrors – the primary and auxiliary mirrors
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`claimed by the ’047 patent.
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`VII. THE ’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR THE CLAIMS OF THE ’047 PATENT
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`I understand that the ’047 patent claims priority through the ’843
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`patent, which claims priority through the ’154 patent. I understand that therefore,
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`the application leading to the ’154 patent (App. No. 12/197,666 (the “’666
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`application”)) must provide written description support for the claims of the ’047
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`patent. Thus, throughout this discussion, I will also refer to the disclosures of the
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`’666 application, in addition to the patents where appropriate.
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` Reading the ’666 application, one of ordinary skill in the art would
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`plainly recognize that the invention disclosed is drawn to mirror assemblies that
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`Exhibit 1002
`Page 019
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`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,591,047
`use a single reflective element. There are many cues recognizable to one of
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`ordinary skill in the art that leads to this conclusion. Specifically, the title of the
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`application refers to a single “reflective element.” Additionally, one of ordinary
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`skill in the art reading the ’666 application would expect and recognize that the
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`Summary of the Invention section of the ’666 application (¶¶ 6-17) describes
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`general aspects of the invention as a whole, while Description of the Preferred
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`Embodiments