Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: July 24, 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 IPR2018-00517
`Patent 8,128,244 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and
`SCOTT E. BAIN, Administrative Patent Judges.
`
`BAIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`

`

`IPR2018-00517
`Patent 8,128,244 B2
`
`I. INTRODUCTION
`SMR Automotive Systems USA, Inc. (“Petitioner”)1 filed a Petition
`for inter partes review of claims 1–26 of U.S. Patent No. 8,128,244 B2
`(Ex. 1001, “the ’244 patent”). Paper 2 (“Pet.”). Magna Mirrors of America,
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). Institution of an inter partes review is authorized, though not
`required, 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). We have considered the Petition, the
`Preliminary Response, and accompanying exhibits submitted by the parties.
`For the reasons set forth herein, we decline to institute inter partes review of
`claims 1–26 of the ’244 patent.
`
`A. Related Matters
`The parties indicate that the ’244 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
`’244 patent:
`
`
`1 Petitioner identifies itself and the following additional entities as the real
`parties-in-interest: Samvardhana Motherson Reflectec Group Holdings Ltd.,
`SMR Automotive Mirror Parts and Holdings UK Limited, SMR Mirrors UK
`Limited, SMR Automotive Mirrors UK Limited, SMR Automotive Mirror
`Systems Holding Deutschland GmbH, SMR Automotive Mirrors Stuttgart
`GmbH, SMR Automotive Vision Systems Mexico S.A. de C.V., and SMR
`Automotive Servicios Mexico S.A. de C.V. Pet. 2–3.
`
`2
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`IPR2018-00517
`Patent 8,128,244 B2
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`
`
`IPR2018-00491
`IPR2018-00505
`IPR2018-00506
`IPR2018-00520
`IPR2018-00533
`IPR2018-00536
`IPR2018-00541
`IPR2018-00545
`IPR2018-009312
`
`U.S. Patent No. 7,934,843 B2
`U.S. Patent No. 8,147,077 B2
`U.S. Patent No. 8,591,047 B2
`U.S. Patent No. 8,267,534 B2
`U.S. Patent No. 8,783,882 B2
`U.S. Patent No. 8,550,642 B2
`U.S. Patent No. 8,899,762 B2
`U.S. Patent No. 9,694,750 B2
`U.S. Patent No. 8,128,243 B2
`
`Pet. 3; see also Paper 5, 1.
`
`B. The ’244 Patent
`The ’244 patent is directed to an exterior sideview mirror. Ex. 1001,
`Abstract. The mirror includes a plano reflective element and an auxiliary
`reflective element mounted adjacent to each other in a side-by-side
`relationship. Id. Figure 16 of the ’244 patent, reproduced below, is
`illustrative of the invention:
`
`
`2 See IPR2018-00931, Paper 1, 3.
`
`3
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`IPR2018-00517
`Patent 8,128,244 B2
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`Figure 16 depicts an embodiment of a plano reflective element
`assembly. As indicated in Figure 16, plano-auxiliary reflective element
`assembly 310 includes a first reflective element 312 and an auxiliary
`reflective element 314 supported in frame assembly 316. Id. at 15:60–63.
`Reflective element 312 comprises a plano reflective element 350, such as a
`flat reflector coated glass substrate. Id. at 16:20–22. Reflective element 314
`comprises a radiused reflective element, preferably, a multiradiused
`reflective element 355 having a multiradiused curvature. Id. at 17:45–47.
`
`C. Illustrative Claim
`Petitioner challenges all claims (i.e., claims 1–26) of the ’244 patent.
`Claims 1, 23, and 25 are independent. Claim 1 is reproduced below (with
`Petitioner’s notations included for clarity).
`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 reflective
`element having unit magnification and a separate auxiliary
`reflective element having a curvature;
`
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`IPR2018-00517
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`[e] said plano reflective element and said auxiliary
`reflective element of said plano-auxiliary reflective element
`assembly mounted adjacently at said planoauxiliary 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 planoauxiliary
`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;
`[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;
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`IPR2018-00517
`Patent 8,128,244 B2
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`[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 planoauxiliary
`reflective element assembly when said plano-auxiliary reflective
`element assembly is included in said exterior sideview mirror
`assembly and 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) 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 reflective
`element assembly
`includes a demarcation element, said
`demarcation element disposed at said joint to form a demarcation
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`IPR2018-00517
`Patent 8,128,244 B2
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`between said plano reflective element and said auxiliary
`reflective element, said demarcation element having a portion
`visible to a driver of the automobile when said exterior sideview
`mirror assembly is attached to the side of the automobile;
`[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;
`[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.
`Pet. 81–83; Ex. 1001, 27:58–29:44.
`
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`IPR2018-00517
`Patent 8,128,244 B2
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–26 are unpatentable based on the
`following grounds (Pet. 4–5):
`Reference(s)
`The ’026 publication3
`Henion,4 Platzer,5 and Catlin6
`
`
`Challenged Claims
`1–26
`23–26
`
`Basis
`§ 102
`§ 103(a)
`
`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. 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 disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner proposes a construction for “side-by-side.” Pet. 7–8.
`Patent Owner proposes a construction for “generally views towards a blind
`spot,” Prelim. Resp. 37–41, and a construction for “backing plate,” id. at 42–
`46. For purposes of this decision, however, we need not expressly construe
`
`
`3 U.S. Patent Application Publication No. 2002/0072026 A1, filed Dec. 20,
`2000, published June 13, 2002 (Ex. 1011, “the ’026 publication”).
`4 PCT International Publication No. WO 01/44013 A1, pub. June 21, 2001
`(Ex. 1012, “Henion”).
`5 PCT International Publication No. WO 01/81956 A1, pub. Nov. 1, 2001
`(Ex. 1013, “Platzer”).
`6 U.S. Patent No. 5,721,646, issued Feb. 24, 1998 (Ex. 1034, “Catlin”).
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`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., 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
`(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
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`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. degree in Optics, Optical Engineering, or similar studies
`in a related field (e.g., Physics or Mechanical Engineering) with 2–3 years of
`experience in the optics/mechanical industry.” 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
`engineering, or optical engineering), as well as 2–3 years of experience in
`the automotive industry designing components for automobiles.” Ex. 2001
`¶ 26.
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`The levels of ordinary skill proposed by the parties differ primarily
`regarding work experience. Mr. Nranian’s description of the person of
`ordinary skill in the art requires a person to have had two to three years of
`experience in the automotive industry designing components for
`automobiles. Dr. Sasian’s description of the person of ordinary skill in the
`art, in contrast, requires the hypothetical person to have had two to three
`years of experience in the optics/mechanical industry. Moreover, Dr. Sasian
`testifies that additional education can compensate for less work experience.
`Based on the record before us, we determine Dr. Sasian’s description
`of a person of ordinary skill in the art to be the more accurate one. His
`description of the level of skill in the art is more inclusive and reflective of
`the prior art of record, as opposed to Mr. Nranian’s description. See, e.g.,
`Ex. 1001, 1:25–32 (citing U.S. Pat. Nos. 4,737,188; 4,944,581; and
`5,483,386 (none of which are directed to only automobile mirrors, but
`directed to mirror elements in general)).
`D. Dr. Sasian Is Qualified To Testify
`Patent Owner argues that Dr. Sasian is “not qualified” to testify
`
`regarding what would have been known to a person of ordinary skill in the
`art, and that his “unqualified” testimony is entitled to little weight, because
`Dr. Sasian does not have experience in the automotive industry. Prelim.
`Resp. 48–50. Patent Owner further argues that the problems addressed by
`the ’244 patent “would not be familiar to a person with an optics degree”
`such as Dr. Sasian. Id. at 49.
`As explained above, however, we do not agree that a person having
`ordinary skill in the art at the time of the invention must have had two to
`three years of experience in the automotive industry designing components
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`for automobiles. Moreover, Dr. Sasian has significantly more experience
`and education than acknowledged by Patent Owner, including industry
`experience and involvement in projects that included automotive optics. Ex.
`1002 ¶¶ 2–12. Dr. Sasian’s qualifications and experience are sufficient to
`qualify him as an expert in the pertinent field under Federal Rule of
`Evidence 702. Id. 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 reject Patent Owner’s argument that we should give the entirety of Dr.
`Sasian’s declaration little weight.
`E. Asserted Anticipation of
`Claims 1–26 by the ’026 Publication
`1. Overview
`Petitioner contends that claims 1–26 are unpatentable under 35 U.S.C.
`§§ 102(a), (b), and (e) as anticipated by the ’026 publication. Pet. 35–50.
`The ’026 publication is a United States Patent Application Publication, filed
`December 20, 2000 and published June 13, 2002. Ex. 1011, 1. The ’026
`
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`Patent 8,128,244 B2
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`publication lists Niall R. Lynam, John O. Lindahl, and Hahns Y. Fuchs as
`inventors. Id. The application that issued as the ’244 patent was filed
`March 24, 2011, lists Niall R. Lynam as the sole inventor, and includes the
`following statement of “Related U.S. Application Data” (Ex. 1001, 1):
`Division of application No. 12/851,045, filed on Aug. 5, 2010,
`now Pat. No. 7,934,843, which is a continuation of application
`No. 12/197,666, filed on Aug. 25, 2008, now Pat. No. 7,842,154,
`which is a division of application No. 10/709,434, filed on May
`5, 2004, now Pat. No. 7,420,756. [ ] Provisional application No.
`60/471,872, filed on May 20, 2003.
`Petitioner’s anticipation challenge relies upon two alternative
`contentions. First, Petitioner contends that the ’026 publication is prior art
`under 35 U.S.C. § 102(b) because the ’244 patent only is entitled “to the
`actual filing date of its ancestor U.S. Patent No. 7,934,843” (Ex. 1008, “the
`’843 patent”), i.e., August 5, 2010, which is well over one year after the ’026
`publication date, i.e., June 13, 2002. Pet. 9. Petitioner explains that the ’244
`patent is not entitled to any effective filing date earlier than the ’843 patent
`filing date because the immediate parent application of the ’843 patent (Ex.
`1014, U.S. Patent Application No. 12/197,666 (“the ’666 application”))
`“does not provide written description support for the ’244 patent’s claims.”
`Id.
`
`Second, Petitioner alternatively contends that the ’026 publication 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, prior to the earliest
`alleged effective filing date of the ’244 patent. Pet. 8. Petitioner asserts that
`the ’026 publication is “by another” because it names three inventors
`(Lindahl, Fuchs, and Lynam) whereas the ’244 patent names just one
`(Lynam). Id.
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`Patent Owner responds that each of the foregoing issues were
`considered by the Patent Office repeatedly during prosecution of the ’244
`patent and its family, and, therefore, we should deny institution under 35
`U.S.C. § 325(d). Prelim. Resp. 11–17, 24–27.
`For the reasons that follow, we determine that the Patent Office
`considered during prosecution both (1) whether the ’244 patent is entitled to
`a May 20, 2003 filing date, and (2) whether the ’026 publication qualifies as
`prior art under 35 U.S.C. §§ 102(a) and (e) because it is not the work of
`another. We, therefore, exercise our discretion under 35 U.S.C. § 325(d) to
`decline review on Petitioner’s anticipation challenge.
`2. Prosecution of the ’843 patent and the ’244 patent7
`The ’843 patent is the parent to the ’244 patent and also lists Niall R.
`Lynam as the sole inventor. Ex. 1008, 1.8 During prosecution of the
`application that issued as the ’843 patent, the Examiner initially found that
`the claims were not entitled to the benefit of any earlier filing date. Ex.
`1009, 139–141. Based on that finding, the Examiner rejected claims 1–23
`and 27–39 under 35 U.S.C. § 102(b) as anticipated by the ’026 publication
`and rejected claims 24–26 under 35 U.S.C. § 103(a) as obvious over the
`’026 publication in view of another reference. Id. at 141–155.
`In response to the Examiner’s rejections, the Applicant argued that the
`’026 publication was not prior art under 35 U.S.C. § 102(b) because the
`application was entitled to an effective filing date of May 20, 2003, as “[t]he
`
`
`7 Petitioner provides a chart illustrating the relevant dates and relationships
`between the various patents and applications discussed herein. Pet. 12.
`8 On March 24, 2011, the Applicant filed a terminal disclaimer on the ’843
`patent. Ex. 1006, 128–133.
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`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. In addition, the Applicant
`submitted a declaration from Niall R. Lynam in support of Applicant’s
`arguments. Id. at 53–56. Dr. Lynam declared that the invention recited in
`the independent claims of the application which matured into the ’843 patent
`was reduced to practice prior to June 13, 2002, and referred to U.S. Patent
`No. 6,522,451 as evidence of that fact.9 Id. at 55.
`Upon consideration of the Applicant’s arguments and the declaration
`of Dr. Lynam, the Examiner allowed the claims. Id. at 23. In the Reasons
`for Allowance, the Examiner explained 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.
`(emphasis added).
`The prosecution history of the ’244 patent is similar to that of the ’843
`patent. The same Examiner rejected claims 1–26 under 35 U.S.C. § 102(e)
`as anticipated by the ’026 publication, finding that it “constitutes prior art”
`based upon its “earlier effective U.S. filing date.” Ex. 1006, 145. Applicant
`responded with nearly identical arguments to those made in the ’843 patent
`prosecution, including that the application was entitled to a May 20, 2003
`filing date because “[t]he present application incorporates by reference U.S.
`
`
`9 U.S. Patent No. 6,522,451 is the parent to U.S. Patent No. 6,717,712. See
`Ex. 1017. The publication of the application that matured into the 6,717,712
`patent is the ’026 publication. See id.
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`Patent Nos. 6,522,451 and 6,717,712.” Id. at 248–50. In addition, the
`Applicant submitted a declaration of Niall R. Lynam similar to the one
`submitted during prosecution of the ’843 patent. Id. at 166–69. The
`Examiner then allowed the claims. Id. at 258.
`3. Discussion
`Petitioner asserts that the ’244 patent is entitled to the filing date of
`the ’843 patent, but is not entitled to the filing date of any preceding
`applications. Pet. 9. Petitioner argues that the application immediately
`preceding the ’843 patent (i.e., the ’666 application) does not provide written
`description support for the claims of the ’244 patent. Id. Although
`Petitioner acknowledges that this issue was raised previously, Petitioner
`argues that the Examiner failed to determine whether U.S. Patent Nos.
`6,522,451 (“the ’451 patent”) and 6,717,712 (“the ’712 patent”) were
`incorporated in their entireties into the ’843 patent, and whether the
`combined disclosures supported the claimed invention. Id. at 14–15, 19.
`Petitioner argues that the “examiner did not explain his reasoning” in
`allowing the claims. Id. at 19.
`
`In particular, Petitioner argues that a passage from the ’666
`application does not incorporate by reference the ’451 and ’712 patents in
`their entireties, so as to provide written description support for the claims in
`the ’244 patent. Pet. 21–25. 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.
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`Patent 8,128,244 B2
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`Ex. 1014 ¶ 28 (emphasis added).
`Petitioner argues that the foregoing passage 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. Pet. 22–23.
`Petitioner argues that, by contrast, in other instances during the prosecution
`when Patent Owner intended to incorporate a reference into the ’666
`application in its entirety, Patent Owner expressly said so. Id. at 23 (citing
`Ex. 1014 ¶¶ 1, 45, 46).
`Patent Owner responds that because the Office considered the issue of
`whether the ’244 patent and other patents in the same family are entitled to
`claim priority to provisional application No. 60/471,872 (filed May 20,
`2003) (“the ’872 provisional application”), we should exercise discretion to
`not consider such arguments again. Prelim. Resp. 11, 14–17. Specifically,
`Patent Owner argues that the ’026 publication “is not prior art to the ‘244
`patent and the question has been considered eight times, by two different
`examiners.” Id. at 17; id. at 1. 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 17.
`Our 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” if the threshold standard is met). Moreover,
`35 U.S.C. § 325(d) states, in relevant part, “[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
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`Patent 8,128,244 B2
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`because, the same or substantially the same prior art or arguments previously
`were presented to the Office.”
`We have considered the prosecution history of the ’244 patent and
`related patents, including the ’843 patent. We determine that the issue of
`whether the ’244 patent is entitled to Patent Owner’s claimed priority date,
`i.e., May 20, 2003 (Prelim. Resp. 12), was indeed considered previously by
`the Office. Petitioner acknowledges that this issue was presented and argued
`to the Examiner. See, e.g., Pet. 14–15. Moreover, Petitioner has not
`presented further sufficient evidence on this record that would persuade us to
`reach a different conclusion from the Examiner’s determination that the
`challenged claims are adequately disclosed in the priority applications.
`In particular, we disagree with Petitioner’s argument that the above-quoted
`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 asserts
`(Prelim. Resp. 18–20), the passage is subject to at least one additional
`interpretation, and we agree that Patent Owner’s interpretation of the
`passage is the correct one. See Harari v. Lee, 656 F.3d 1331, 1335–36 (Fed.
`Cir. 2011) (explaining that broad and unequivocal language of a first clause
`incorporates the entire disclosures of the two applications and that a second
`clause’s narrower language did not diminish the scope of the earlier
`incorporation).
`Moreover, we disagree with 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 ’244 patent’s claims.
`Pet. 26–32. The Examiner of the applications that matured into the ’843 and
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`’244 patents would have had to consider whether the ’666 application
`provides written description support for the ’244 patent’s claims, in
`determining that the ’244 patent was entitled to the priority date asserted by
`the Applicant. See, e.g., Ex. 1009, 21–23.10 Moreover, we find persuasive
`Patent Owner’s arguments (Prelim. Resp. 20–24) that “the text from the ’451
`and ’712 patents that is in the ’666 application through the incorporation by
`reference defines the invention more broadly” than is characterized by
`Petitioner. It states, for example, that the invention “relates to . . . plano-
`auxiliary reflective elements assemblies,” that the reflective elements may
`be made of a glass substrate with metallic reflector coating, and that “thin
`glass” may be used in a variety of mirror assemblies. Id. at 23 (citing Ex.
`1016, 1:7–10, 7:13–15, 8:18–20). Accordingly, we determine that the ’026
`publication’s status as possible Section 102(b) prior art to the ’244 patent
`and its family has been 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 ’244 patent is
`entitled to the May 20, 2003 priority date of the ’872 provisional application,
`the ’026 publication still qualifies as prior art under 35 U.S.C. §§ 102(a) and
`(e) because the ’026 publication is “by another.” Pet. 8. Petitioner argues
`that during prosecution of the ’244 patent, the issue of whether relevant
`
`
`10 By indicat