`
`Paper No. 7
`
`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 IPR2018-00517
`Patent No. 8,128,244
`
`
`PATENT OWNER MAGNA MIRRORS OF AMERICA, INC.’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`Case IPR2018-00517
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ..................................................................................................... 1
`BACKGROUND ....................................................................................................... 2
`I.
`Magna .................................................................................................... 2
`II.
`The ‘244 Patent ..................................................................................... 3
`PETITIONER FAILS TO SHOW A REASONABLE LIKELIHOOD THAT
`THE CHALLENGED CLAIMS ARE ANTICIPATED OR OBVIOUS. .... 10
`I.
`Legal Standards ................................................................................... 10
`II.
`The Board Should Deny Institution On Ground 1. ............................. 11
`A. Ground 1 Should Be Denied Because Lynam ‘026 Is Not
`Prior Art, As The PTO Repeatedly Found. ............................... 11
`1.
`The Prosecution History of the ‘244 Patent. .................. 12
`2.
`SMR Fails To Show Why The Board Should
`Reconsider The PTO’s Conclusion That The ‘244
`Patent Properly Claims Priority To The ‘872
`Provisional. ..................................................................... 17
`a.
`The ‘666 application incorporates by
`reference the ‘451 and ‘712 patents in their
`entirety. ................................................................. 18
`The Written Description Of The ‘666
`Application Supports The Claims Of The
`‘244 Patent. ........................................................... 21
`SMR Fails To Show Why The Board Should
`Reconsider The PTO’s Conclusion That Lynam
`‘026 Is Not Prior Art. ...................................................... 25
`
`b.
`
`3.
`
`i
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`B.
`
`B.
`
`C.
`
`Ground 1 Should Also Be Denied Because It Raises
`Inventorship Questions That Are Better Addressed In
`District Court. ............................................................................ 28
`III. The Board Should Deny Institution On Ground 2 Because SMR
`Has Not Shown That The Prior Art Discloses All Claim
`Limitations Or A Sufficient Motivation To Combine. ....................... 30
`A.
`The Petition Improperly Incorporates By Reference The
`Sasian Declaration..................................................................... 31
`Henion ‘013 Discloses A Trailer Towing Mirror, Not A
`Blind Spot Mirror. ..................................................................... 34
`Henion ‘013 Does Not Disclose Or Render Obvious
`Viewing Generally Towards The Blind Spot. .......................... 37
`1.
`Claim Construction ......................................................... 37
`2.
`SMR Does Not Show That Henion ‘013 Discloses
`A Reflective Element That “Generally Views
`Towards A Blind Spot” .................................................. 41
`SMR Cannot Rely On The Adjustable Auxiliary
`Embodiment Of Henion ‘013 To Meet Claim 25 Because
`It Does Not Include The Claimed “Backing Plate.” ................. 41
`1.
`Claim Construction ......................................................... 42
`2.
`Henion ‘013 Does Not Disclose Limitation 25[s]. ......... 46
`SMR’s Obviousness Arguments Rely On The
`Unsupported Opinions Of Its Unqualified “Expert.” ............... 47
`1.
`SMR’s Expert Is Not A POSA. ...................................... 48
`2.
`SMR Fails To Show That Limitation 25[s] Is
`Obvious. .......................................................................... 50
`SMR Fails To Show That A Field Of View Of At
`Least 25 Degrees Is Obvious. ......................................... 51
`
`D.
`
`E.
`
`3.
`
`ii
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`4.
`
`SMR Fails To Show That Elements 23[i] and 25[i]
`Are Obvious. ................................................................... 52
`CONCLUSION ........................................................................................................ 52
`CERTIFICATE OF COMPLIANCE ....................................................................... 54
`
`iii
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Allergan, Inc. v. Apotex Inc.,
`754 F.3d 952 (Fed Cir. 2014) ............................................................................. 25
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00358, Paper 9 (PTAB July 2, 2015) .................................................. 33
`Ariad Pharm., Inc. v. Eli Lily & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) .......................................................... 21
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 20
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ............................................. 33
`Cultec, Inc. v. Stormtech LLC,
`IPR2017-00777, Paper 7 (PTAB Aug. 22, 2017) ............................................... 11
`Harari v. Lee,
`656 F.3d 1331 (Fed. Cir. 2011) .............................................................. 18, 19, 20
`Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc.,
`IPR2015-00616, Paper 9 (PTAB Aug. 17, 2015) ......................................... 11, 32
`Hospira, Inc. v. Genentech, Inc.,
`IPR2017-00739, Paper 16 (PTAB July 27, 2017) .............................................. 11
`Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd.,
`838 F.3d 1236 (Fed. Cir. 2016) .......................................................................... 20
`Johns Manville Corp. v. Knauf Insulation Inc.,
`IPR 2015-01633 .................................................................................................. 51
`In re Katz,
`687 F.2d 450 (C.C.P.A. 1982) ...................................................................... 25, 26
`
`iv
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`Modine Mfg. Co. v. ITC,
`75 F.3d 1545 (Fed. Cir. 1996), abrogated by Festo Corp. v.
`Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed.
`Cir. 2000) (en banc) ............................................................................................ 21
`In re NuVasive, Inc.,
`693 F. App’x 893 (Fed. Cir. 2017) ..................................................................... 40
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 40
`SCHOTT Gemtron Corp. v. SSW Holding Co.,
`IPR2014-00367, Paper No. 62 (PTAB May 26, 2015) ...................................... 50
`Sewall v. Walters,
`21 F.3d 411 (Fed. Cir. 1994) .............................................................................. 29
`In re Smith Int’l, Inc.,
`871 F.3d 1375 (Fed. Cir. 2017) .......................................................................... 40
`SMR Automotive Sys. USA, Inc. v. Magna Mirrors of Am., Inc.,
`IPR2018-00491 ................................................................................................... 22
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .......................................................................... 40
`Telemac Cellular Corp. v. Topp Telecom, Inc.,
`247 F.3d 1316 (Fed. Cir. 2001) .......................................................................... 21
`Unified Patents Inc. v. Berman,
`IPR2016-01571, Paper 10 (PTAB Dec. 14, 2016) ....................................... 12, 30
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .................................................................... 34, 37
`Zenon Envtl., Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) .......................................................................... 20
`Statutes
`35 U.S.C. § 102(a) ............................................................................................passim
`35 U.S.C. § 102(b) ................................................................................................... 25
`
`v
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`35 U.S.C. § 102(e) ............................................................................................passim
`35 U.S.C. § 256(b) ................................................................................................... 29
`35 U.S.C. § 314(a) ................................................................................................... 10
`35 U.S.C. § 325(d) ......................................................................................... 2, 11, 28
`Other Authorities
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.108(c) ............................................................................................... 10
`MPEP 2132.01 ......................................................................................................... 25
`
`
`vi
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`INTRODUCTION
`In accordance with 37 C.F.R. Section 42.107, patent owner Magna Mirrors
`
`of America, Inc. (“Magna”) submits this preliminary response to the Petition filed
`
`by SMR Automotive Systems USA, Inc. (“SMR”) requesting inter partes review
`
`of claims 1-26 of U.S. Patent No. 8,128,244 (“the ‘244 patent”). Magna requests
`
`that the Board deny the inter partes review as to all grounds, none of which have
`
`merit.
`
`SMR’s first proposed ground is anticipation based on U.S. Pat. Pub. No.
`
`2002/0072026 (“Lynam ‘026”), the published application of Dr. Lynam’s prior
`
`U.S. Pat. No. 6,717,712 (“the ‘712 patent”), which is incorporated by reference
`
`into the ‘244 patent. But Lynam ‘026 was considered in depth during the
`
`prosecution of the ‘244 patent and seven other patents in the ‘244 patent family.
`
`For example, the PTO removed Lynam ‘026 as prior art during prosecution of
`
`related U.S. Pat. No. 7,934,843 (“the ‘843 patent”) after concluding that the ‘843
`
`patent is entitled to its claimed priority date and that “Niall Lynam conceived or
`
`invented the subject matter disclosed in the patent application publication.” Ex.
`
`1009, 23. The PTO reached the same conclusion regarding Lynam ‘026 in each of
`
`the eight prosecutions where it was considered, including during prosecution of the
`
`‘244 patent. The Board should therefore deny institution of the Lynam ‘026
`
`ground both because that application is not prior art to the ‘244 patent and also,
`
`1
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`pursuant to 35 U.S.C. § 325(d), because the question of whether it is prior art has
`
`been extensively considered by the PTO.
`
`SMR’s remaining ground relies on WO 01/44013 to Henion (“Henion
`
`‘013”). Henion ‘013 is directed to an entirely different application, namely, a
`
`trailer towing mirror, in contrast to the inventions claimed in the ‘244 patent,
`
`which are directed to exterior rearview mirror systems for improved viewing of the
`
`blind spot. SMR’s attempts to address some of Henion ‘013’s deficiencies through
`
`obviousness arguments completely ignore other deficiencies in Henion ‘013
`
`previously raised by Magna in the co-pending district court litigation and fail to set
`
`forth a sufficient reason, other than hindsight, why a person of ordinary skill would
`
`have combined the references to arrive at the claimed inventions of the ‘244 patent.
`
`Institution should therefore be denied on this ground as well.
`
`BACKGROUND
`
`I. Magna
`Patent Owner Magna was founded in 1905 to become Donnelly Corporation
`
`in the 1980s. Donnelly Corporation was acquired by Magna International in 2002
`
`and became known as Magna Donnelly Corporation. In 2008, it changed its name
`
`to Magna Mirrors of America, Inc. Magna is a leading supplier of mirror and
`
`electronic vision systems for the automotive industry. Magna supplies products
`
`that practice the ‘244 patent to automobile original equipment manufacturers
`
`2
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`(“OEMs”) such as Ford, Hyundai, and Kia. These products, as well as infringing
`
`products sold by SMR, have enjoyed widespread commercial success.
`
`Dr. Lynam, the inventor of the ‘244 patent, was a longtime Donnelly
`
`employee and is currently Magna’s Chief Technical Officer. He is a named
`
`inventor on hundreds of issued U.S. Patents.
`
`II. The ‘244 Patent
`The ‘244 patent’s claims generally relate to a mirror system with a main flat
`
`(plano) reflective element and a separate, outboard curved auxiliary reflective
`
`element on a single backing plate. This mirror system is designed to solve the
`
`problem of the blind spot that a conventional, flat exterior side view mirror has in a
`
`side lane adjacent to the driver. The blind spot means that a driver may not see a
`
`passing vehicle in an adjacent side lane, and may therefore attempt to merge into
`
`the lane when the lane is not clear of traffic. Prior to the invention of the ‘244
`
`patent, the blind spot problem had existed for decades. While many proposed
`
`solutions existed in the art, no blind spot solution had achieved significant
`
`commercial success or widespread adoption prior to the ‘244 patent invention date.
`
`See, e.g., U.S. Pat. No. 5,579,133, Ex. 2003, at 1:23-33 (noting that blind spot
`
`problem “has existed in the art practically since the advent of the enclosed
`
`automobile” and “[n]umerous attempts to solve this problem have been made”).
`
`3
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`An exemplary depiction of the side view of a mirror subassembly (the
`
`reflective elements and the backing plate) from the ‘244 patent is shown below:
`
`Backing plate
`
`Auxiliary reflective element
`
`
`Main plano reflective element
`
`An exemplary photograph of one of Magna’s complete mirror assemblies for
`
`the Ford Mustang that practices the ‘244 patent can be seen here:
`
`The auxiliary reflective element is supported on the single backing plate at
`
`an angle relative to the primary reflective element. More specifically, among
`
`
`
`4
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`numerous other requirements, the ‘244 patent claims require that the auxiliary
`
`reflective element be angled and positioned such that it “generally views towards a
`
`blind spot in the side lane” while the plano reflective element “generally views
`
`rearwardly of the equipped automobile.” See Ex. 1001, Claims 1, 23, 25. Claim 1
`
`is set forth below (emphases added):
`
`1. An exterior sideview mirror system suitable for use on
`an automobile, said exterior sideview mirror system
`comprising:
`
`[a] an exterior sideview mirror assembly adapted for
`attachment to a side of an automobile;
`
`[b] said exterior sideview mirror assembly including a
`reflective element having a rearward field of view when
`attached to the side of the automobile;
`
`[c] 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;
`
`[d] wherein said reflective element comprises a plano-
`auxiliary reflective element assembly, said plano-
`auxiliary reflective element assembly comprising a plano
`
`5
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`reflective element having unit magnification and a
`separate auxiliary reflective element having a curvature;
`
`[e] 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;
`
`[f] 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 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;
`
`[g] 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;
`
`[h] said backing plate element having a first support
`portion supporting said plano reflective element and a
`second support portion supporting said auxiliary
`reflective element;
`
`6
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`[i] 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;
`
`[j] wherein said backing plate element comprises a
`polymeric substrate that is formed as a single element by
`injection molding of a polymeric resin;
`
`[k] wherein said backing plate element is capable of
`supporting said plano reflective element and said
`auxiliary reflective element;
`
`[l] 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;
`
`[m] 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;
`
`[n] wherein the rearward field of view of said auxiliary
`reflective element is different from and angled to the
`rearward field of view of said plano reflective element
`when both are attached to said backing plate element of
`said plano-auxiliary reflective element assembly when
`said plano-auxiliary reflective element assembly is
`included in said exterior sideview mirror assembly and
`
`7
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`when said exterior sideview mirror assembly is attached
`to the side of the automobile;
`
`[o] wherein angling of the rearward field of view of said
`auxiliary reflective element relative to the rearward field
`of view of said plano reflective element is achieved, at
`least in part, by an angling of said second support portion
`of said backing plate element supporting said auxiliary
`reflective element relative to said first support portion of
`said backing plate element supporting said plano
`reflective element;
`
`[p] wherein, when said exterior sideview mirror assembly
`is attached to the side of the automobile, the field of view
`of said plano reflective element generally views
`rearwardly of the equipped automobile and the field of
`view of said auxiliary reflective element generally views
`towards a blind spot in the side lane adjacent the side of
`the automobile to which said exterior sideview mirror
`assembly is attached, said blind spot being generally
`outside the rearward field of view of said plano reflective
`element when said plano reflective element is viewed by
`a driver of the equipped automobile when said exterior
`sideview mirror assembly is attached to the side of the
`automobile;
`
`[q] wherein at least one of said plano reflective element
`and said auxiliary reflective element comprises one of (a)
`
`8
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`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;
`
`[r] 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 element assembly includes a demarcation
`element, said demarcation element disposed at said joint
`to form a demarcation between said plano reflective
`element and said auxiliary reflective element, said
`demaraction 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;
`
`[s] 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;
`
`[t] wherein said demarcation element is dark colored;
`
`[u] wherein said demarcation element comprises a
`polymer material
`
`9
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`[v] wherein said joint comprises a space between said
`plano reflective element and said auxiliary reflective
`element;
`
`[w] wherein said demarcation element is at least partially
`disposed at said space between said plano reflective
`element and said auxiliary reflective element; and
`
`[x] 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.
`
`Certain dependent claims provide further specificity regarding the field of
`
`view and angling of the auxiliary reflective element. Other dependent claims
`
`include limitations specifying the composition of the mirror glass and a limitation
`
`specifying the ratio between the width of the primary reflective element and the
`
`auxiliary reflective element.
`
`PETITIONER FAILS TO SHOW A REASONABLE LIKELIHOOD THAT
`THE CHALLENGED CLAIMS ARE ANTICIPATED OR OBVIOUS.
`Legal Standards
`For each claim challenged in its petition for inter partes review, SMR bears
`
`I.
`
`the burden of showing that there is a “reasonable likelihood” that it will prevail in
`
`its challenge. 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). As the Board
`
`has explained, the petitioner has “the burden of proof to establish that it is entitled
`
`10
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`to the requested relief.” Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc.,
`
`IPR2015-00616, Paper 9 at 7 (PTAB Aug. 17, 2015) (citing 37 C.F.R. § 42.20(c)).
`
`As explained further below, the Board may also deny institution of inter partes
`
`review for discretionary reasons, including because “the same or substantially the
`
`same prior art or arguments previously were presented to the Office.” 35 U.S.C. §
`
`325(d).
`
`II. The Board Should Deny Institution On Ground 1.
`A. Ground 1 Should Be Denied Because Lynam ‘026 Is Not Prior
`Art, As The PTO Repeatedly Found.
`As demonstrated below, the PTO considered the issues raised in Ground 1
`
`(including whether the ‘244 patent is entitled to its claimed priority date and
`
`whether Lynam ‘026 qualifies as prior art) repeatedly during the prosecution of the
`
`‘244 patent and its family. In these circumstances, the Board can and should
`
`exercise its discretion to deny institution under 35 U.S.C. § 325(d). See Cultec,
`
`Inc. v. Stormtech LLC, IPR2017-00777, Paper 7 at 13 (PTAB Aug. 22, 2017)
`
`(informative) (denying institution under Section 325(d) because “the same or
`
`substantially the same prior art or arguments as are presented in the Petition
`
`previously were presented to the Office”); Hospira, Inc. v. Genentech, Inc.,
`
`IPR2017-00739, Paper 16 at 17–19 (PTAB July 27, 2017) (informative) (denying
`
`institution under Section 325(d) because the petitioner’s priority challenge was
`
`already considered by the PTO). Instituting inter partes review on Ground 1
`
`11
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`“would not be an efficient use of Board resources.” Unified Patents Inc. v.
`
`Berman, IPR2016-01571, Paper 10 at 12 (PTAB Dec. 14, 2016) (informative)
`
`(denying institution on certain claims because “the Petition relies on the same or
`
`substantially the same prior art and arguments presented previously to the Office”).
`
`The Prosecution History of the ‘244 Patent.
`1.
`Dr. Lynam conceived of the inventions that were later claimed in the ‘244
`
`patent sometime in 1999. He filed a patent application disclosing his claimed
`
`inventions on January 6, 2000, which issued as U.S. Patent No. 6,522,451 on
`
`February 18, 2003. Dr. Lynam is the sole named inventor of the ‘451 patent. On
`
`December 20, 2000, he filed a continuation-in-part of the ‘451 patent, which issued
`
`on April 6, 2004 as U.S. Pat. No. 6,717,712 (“the ‘712 patent”). The application
`
`that issued as the ‘712 patent was published on June 13, 2002, as the Lynam ‘026
`
`reference—the reference SMR relies upon in its request. The ‘712 patent names
`
`two additional Donnelly employees as co-inventors, John O. Lindahl and Hahns
`
`Yoachim Fuchs, due to their contribution of elements (namely, a “frame element
`
`assembly”) disclosed and claimed in the ‘712 patent that are not relevant to the
`
`claims of the ‘244 patent.
`
`Dr. Lynam filed provisional patent application no. 60/471,872 (“the ‘872
`
`provisional”), to which the ‘244 patent claims priority, on May 20, 2003. The ‘872
`
`provisional disclosed an inventive composition for a mirror, which SMR refers to
`
`12
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`as the “thin glass” feature. ‘872 provisional, Ex. 2010, 2:4-10; Petition, 17. The
`
`‘872 provisional also disclosed a mirror assembly using the novel mirror
`
`composition. E.g., 2010, 2:13-18. In addition, the ‘872 provisional incorporated
`
`by reference a number of other Magna Donnelly patents and patent applications
`
`disclosing mirrors and features that the novel mirror composition could be used
`
`with, including the ‘451 patent and the ‘712 patent (id., 5:2-6) and interior
`
`electrochromic mirror assemblies (id., 9:28-10:15).
`
`Dr. Lynam filed U.S. Patent Application No. 12/851,045 (“the ‘045
`
`application”), which later issued as the ‘843 patent, on August 5, 2010.1 Because
`
`
`1 Contrary to SMR’s assertion, the filing of the ‘045 application was not an attempt
`
`“[t]o revive prosecution of the ‘712 patent’s abandoned family.” Petition, 12. The
`
`‘045 application included discussion of the novel thin glass substrate first
`
`described in the ‘872 provisional and included claim limitations directed to that
`
`substrate, as well as discussion of the two-element blind spot mirror assembly
`
`disclosed in the ‘451 patent that is incorporated by reference in the ‘872
`
`provisional. See Ex. 1019, ¶¶ 3-17, 44-45, 89-107 (discussing thin glass and
`
`related features), ¶¶ 45-88 (discussing plano-auxiliary mirror assembly and related
`
`features). The ‘045 application could not have been filed as a continuation of the
`
`13
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`the claims in the ‘045 application included the two-element blind spot mirror
`
`assembly described in the ‘451 and ‘712 patents, along with the thin glass
`
`limitations from the ‘872 provisional, the ‘045 application copied material from the
`
`‘451 and ‘712 patents that had previously been incorporated by reference directly
`
`into the specification of the ‘045 application. For example, the ‘045 application
`
`added figures 9-23, which had previously been included through the incorporation
`
`by reference of the ‘451 and ‘712 patents.
`
`During the prosecution of the ‘045 application, the PTO initially rejected the
`
`pending claims on the alleged basis that they were not entitled to claim priority to
`
`the ‘872 provisional. Ex. 1009, 139-40. Specifically, the PTO rejected all claims
`
`other than claims 24-26 as anticipated by Lynam ‘026, the same as SMR’s first
`
`invalidity ground. Id., 141-51.
`
`Dr. Lynam responded by explaining why the priority claim to the ‘872
`
`provisional was proper, due to the incorporation by reference of the ‘451 and ‘712
`
`patents in the ‘843 patent and the applications to which the ‘843 patent claims
`
`priority. Id., 46-48. Additionally, Dr. Lynam submitted a declaration to explain
`
`why Lynam ‘026 did not qualify as prior art. Id., 53-55.
`
`
`‘451 and ‘712 patent family because those patents do not disclose the thin glass
`
`substrate.
`
`14
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`In response, the PTO allowed the application that issued as the ‘843 patent.
`
`The Reasons for Allowance explained that the “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., 23 (emphasis added). In other
`
`words, the Lynam ‘026 was found not to be prior art because it was not the work of
`
`another.
`
`Dr. Lynam went on to prosecute a number of additional patent applications
`
`claiming priority to the ‘843 patent and to the ‘872 provisional. Rejections over
`
`Lynam ‘026 were issued in seven of these prosecutions, including in the
`
`prosecution of the ‘244 patent, as set forth in the table below. Each time (before
`
`two different examiners)2, Dr. Lynam overcame the rejections in the same manner
`
`as during the prosecution of the ‘843 patent.
`
`
`2 U.S. Pat. No. 8,783,882 was prosecuted before a different examiner than the ‘843
`
`patent and the other patents listed below. Compare Ex. 1008, cover with Ex. 1022,
`
`cover.
`
`15
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`U.S.
`Patent
`No.
`
`Rejection
`Over Lynam
`‘026
`
`Response by Dr.
`Lynam
`Explaining
`Incorporation
`by Reference
`
`8,128,243 10/31/2011
`(Ex. 2004, 4-
`11)
`8,128,244 11/16/2011
`(Ex. 1006, 144-
`61)
`8,147,077 1/5/2012
`(Ex. 2006, 3-
`19)
`8,267,534 5/17/2012
`(Ex. 2007, 4-7)
`
`8,550,642 4/23/2013
`(Ex. 2008, 5-7)
`
`8,591,047 8/16/2013
`(Ex. 2009, 3-
`12)
`8,783,882 12/17/2013
`
`11/3/2011
`(Ex. 2004, 15-
`18)
`11/22/2011
`(Ex. 1006, 248-
`50)
`1/6/2012
`(Ex. 2006, 22-
`24)
`5/21/2012
`(Ex. 2007, 22-
`24)
`7/17/2013
`(Ex. 2008, 21-
`23)
`8/21/2013
`(Ex. 2009, 26-
`28)
`3/17/2014
`
`Affidavit by
`Dr. Lynam
`explaining
`Lynam ‘026
`is not Prior
`Art
`11/3/2011
`(Ex. 2004, 19-
`21)
`11/22/2011
`(1006, 166-
`69)
`1/6/2012
`(Ex. 2006, 25-
`28)
`5/21/2012
`(Ex. 2007, 27-
`28)
`7/17/2013
`(Ex. 2008, 26-
`28)
`8/21/2013
`(Ex. 2009, 30-
`32)
`3/17/2014
`
`Notice of
`Allowance
`Agreeing
`with Dr.
`Lynam
`
`1/20/2012
`(Ex. 2004, 27)
`
`1/24/2012
`(Ex. 1006,
`258)
`2/17/2012
`(Ex. 2006, 34)
`
`8/6/2012
`(Ex. 2007, 34)
`
`9/5/2013
`(Ex. 2008, 35)
`
`9/27/2013
`(Ex. 2009, 39)
`
`6/10/2014
`
`16
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`U.S.
`Patent
`No.
`
`Rejection
`Over Lynam
`‘026
`
`Response by Dr.
`Lynam
`Explaining
`Incorporation
`by Reference
`
`(Ex. 1023, 135,
`137-50)
`
`(Ex. 1023, 179-
`80)
`
`Affidavit by
`Dr. Lynam
`explaining
`Lynam ‘026
`is not Prior
`Art
`(Ex. 1023,
`184-86)
`
`Notice of
`Allowance
`Agreeing
`with Dr.
`Lynam
`
`(Ex. 1023,
`349-51)
`
`Accordingly, Lynam ‘026 is not prior art to the ‘244 patent and the question
`
`has been considered eight times, by two different examiners.
`
`2.
`
`SMR Fails To Show Why The Board Should Reconsider
`The PTO’s Conclusion That The ‘244 Patent Properly
`Claims Priority To The ‘872 Provisional.
`SMR focuses its priority argument on whether the application preceding the
`
`‘843 patent, the ‘666 application (Ex. 1014, which became the ‘154 patent),
`
`provides a written description of the claims of the ‘244 patent, asserting that the
`
`‘666 application does not incorporate by reference the relevant teachings of the
`
`‘451 and ‘712 patents (Petition, 21-25), and that even if it did, the written
`
`description would not support the ‘244 patent claims (Petition, 26-35). As the PTO
`
`previously determined when Dr. Lynam prosecuted the ‘244 patent family, SMR’s
`
`arguments are incorrect.
`
`17
`
`

`

`
`
`
`
`Case IPR2018-00517
`
`a.
`
`The ‘666 application incorporates by reference the
`‘451 and ‘712 patents in their entirety.
`The standard for whether material is incorporated by reference “is whether
`
`one reasonably skilled in the art would understand the application as describing
`
`with sufficient particularity the material to be incorporated,” which “is a question
`
`of law.” Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011). In this regard, an
`
`application may incorporate a reference in its entirety, and this incorporation can
`
`then be used to provide written description support. Id. at 1335, 1338 (concluding
`
`that “the entire ‘579 application disclosure was incorporated by the broad and
`
`unequivocal language: ‘The disclosures of the two applications are hereby
`
`incorporate[d] by reference’” and that therefore “the portions of the ‘579
`
`applic