`Petition for Inter Partes Review of USP 8,128,244
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`In re Inter Partes Review of:
`)
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`U.S. Patent No. 8,128,244
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`Issued: March 6, 2012
`)
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`Application No.: 13/071,169
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`
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`For: Exterior Sideview Mirror System
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`FILED VIA E2E
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`
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`DECLARATION OF DR. JOSE SASIAN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,128,244
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`SMR USA
`Exhibit 1002
`Page 001
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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`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 ......................................................................... 6
`IV. BACKGROUND LAW .............................................................................. 7
`A. Written Description .......................................................................... 7
`B.
`Incorporation By Reference .............................................................. 8
`C.
`Understanding Of Legal Principles Relevant To Anticipation
`And Obviousness .............................................................................. 8
`SUMMARY OF OPINIONS .................................................................... 11
`V.
`VI. THE ’244 PATENT .................................................................................. 12
`A.
`The ’244 Patent’s Disclosure .......................................................... 12
`B.
`Application For The ’843 Patent .................................................... 13
`VII. THE ’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR THE INDEPENDENT CLAIMS OF THE ’244
`PATENT ................................................................................................... 14
`A. A POSA Would Not Understand The ’843 Patent Family To
`Incorporate With Particularity The Two-Mirror Assembly Of
`The ’712 And ’451 Patent Family .................................................. 20
`A POSA Would Not Understand The ’666 Application To
`Support The ’843 Patent’s Claims Even If The ’451 And ’712
`Patents Were Fully Incorporated By Reference ............................. 27
`VIII. CLAIM CONSTRUCTION ...................................................................... 38
`A.
`“side-by-side” ................................................................................. 38
`IX. THE PRIOR ART AND BACKGROUND EVIDENCE ......................... 40
`A.
`Prior Art Relied Upon For Anticipation ......................................... 40
`1.
`U.S. Patent Application Publication No. 2002/0072026
`(the “’026 publication”) ........................................................ 40
`
`B.
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`SMR USA
`Exhibit 1002
`Page 002
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`X.
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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`B.
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`Prior Art Relied Upon For Obviousness Combinations ................. 41
`1.
`International Pub. No. WO 2001/44013 (“Henion”) ........... 41
`2.
`International Pub. No. WO 2001/81956 (“Platzer”) ............ 42
`3.
`U.S. Pat. No. 5,721,646 (“Catlin”) ....................................... 42
`Background Evidence ..................................................................... 43
`C.
`CLAIMS 1-26 OF THE ‘244 PATENT ARE ANTICIPATED BY
`THE ’026 PUBLICATION ....................................................................... 43
`A.
`Claim 1 ............................................................................................ 44
`1.
`Preamble, [a], [b] Exterior sideview mirror assembly ......... 44
`2.
`[d] Plano-auxiliary assembly ................................................ 46
`3.
`[q] Reflective Element Substrates ........................................ 47
`4.
`[e], [i] Mounted adjacently and outboard ............................. 48
`5.
`[c] Electrically-operated actuator ......................................... 51
`6.
`[f] Backing plate mounted to actuator .................................. 52
`7.
`[h], [k], [l], [m] Support portions and capable of
`supporting ............................................................................. 54
`[j] Polymeric substrate .......................................................... 56
`8.
`[g], [p] Planar and auxiliary field of view, blind spot .......... 56
`9.
`[n] Different, angled rearward field of view ........................ 58
`10.
`[o] Angled second support portion ....................................... 59
`11.
`[s] Generally coplanar .......................................................... 60
`12.
`[r], [t], [u], [v], [w], [x] Demarcation ................................... 61
`13.
`Claim 2 – Three-degree Angle ...................................................... 65
`Claims 3-5 – Outwardly and/or downwardly ................................. 65
`Claim 6 – Adhesive attachment ...................................................... 67
`Claims 7, 8, 9, 15, 16 – Multiradius, spheric, and aspheric
`shapes .............................................................................................. 68
`Claim 10, 19 – Substrate ................................................................. 70
`F.
`Claim 11 – Curved portion ............................................................. 72
`G.
`Claim 12 – Demarcation partitions ................................................. 74
`H.
`Claim 13 – Auxiliary mirror heater ................................................ 76
`I.
`Claim 14 – Subtended angle ........................................................... 77
`J.
`Claim 17 – Relative sizes ............................................................... 78
`K.
`Claim 18 – 1 to 24 feet behind ....................................................... 78
`L.
`M. Claim 20, 21, 22 - electro-optic or fixed reflective element .......... 80
`N.
`Independent Claim 23 ..................................................................... 81
`1.
`Preamble, claim elements 23[a]-[q] ..................................... 81
`2.
`[r] Curved substrate .............................................................. 81
`
`B.
`C.
`D.
`E.
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`SMR USA
`Exhibit 1002
`Page 003
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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`O.
`P.
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`[s] Joint space ....................................................................... 82
`3.
`Claim 24 – “glass substrate” ........................................................... 84
`Independent Claim 25 ..................................................................... 87
`1.
`Preamble, claim elements 25[a]-[q] ..................................... 87
`2.
`[r] Spherically bent glass substrate ....................................... 88
`3.
`[s] Outwardly and downwardly ............................................ 89
`4.
`[t], [u] Total field of view ..................................................... 89
`Claim 26 – Glass substrate ............................................................. 90
`Q.
`XI. CLAIMS 23-26 OF THE ’244 PATENT WOULD HAVE BEEN
`OBVIOUS OVER HENION, CATLIN, AND PLATZER ...................... 92
`A.
`Claim 23 .......................................................................................... 93
`1.
`Preamble, [a], [b] Exterior sideview mirror assembly ......... 93
`2.
`[c] Electrically-Operated Actuator ....................................... 95
`3.
`[d] Plano-auxiliary assembly ................................................ 96
`4.
`[e] Mounted Adjacently, Side-By-Side, And Not
`Superimposed ....................................................................... 98
`[f] Backing Plate mounted to actuator ................................ 101
`[g], [p] Planar and auxiliary mirror fields of view, blind
`spot...................................................................................... 104
`[h], [k], [l], [m] Support portions and capable of
`supporting ........................................................................... 106
`[i] Auxiliary mirror outboard ............................................. 108
`8.
`[j] Polymeric substrate ........................................................ 115
`9.
`[n] Different, angled rearward field of view ...................... 119
`10.
`[o] Angled second support portion ..................................... 121
`11.
`[q] Reflective Element Substrates ...................................... 123
`12.
`[r] and [s] Reflectance and Wall......................................... 126
`13.
`Claim 24 ........................................................................................ 132
`1.
`Preamble and [a] Fixed Reflectance, Spherically Bent ...... 132
`2.
`[b], [c], [d] Curved Backing Plate Adapted to Rearview
`Mirror With Wall Separator ............................................... 138
`[e] At Least 25 Degrees to Side of Automobile ................. 141
`3.
`Claim 25 ........................................................................................ 147
`1.
`Elements [a]-[q] .................................................................. 147
`2.
`[r] Fixed Reflectance, Spherically Bent ............................. 147
`3.
`[s] Outwardly and Downwardly ......................................... 148
`4.
`[t] Driver’s-Side Mirror Assembly ..................................... 151
`5.
`[u] At least about 25 degrees .............................................. 151
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`5.
`6.
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`7.
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`B.
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`C.
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`SMR USA
`Exhibit 1002
`Page 004
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`D.
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`Claim 26 ........................................................................................ 152
`1.
`[a] Metallic Reflector Coating, Curved Backing Plate ...... 152
`2.
`[b] Wall Element ................................................................ 153
`3.
`[c] Adapted Backing Plate .................................................. 153
`XII. CONCLUSION ....................................................................................... 154
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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`iv
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`SMR USA
`Exhibit 1002
`Page 005
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`I.
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
`
`INTRODUCTION AND QUALIFICATIONS
`I have been retained by SMR Automotive Systems USA Inc. (“SMR”)
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`to provide my opinion concerning the validity of U.S. Patent No. 8,128,244
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`(attached to the accompanying Petition and henceforth referred to as “the ’244
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`patent”) in support of SMR’s Petition for Inter Partes Review of U.S. Patent No.
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`8,128,244.
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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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`I am currently a full-time, tenured Professor of Optical Sciences at the
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`College of Optical Sciences at the University of Arizona in Tucson, Arizona, a
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`position I have held since 2002. As a professor, I teach and perform research in the
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`field of optical design. For example, I teach my students how to design lenses and
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`mirrors and how to think about light so that they can design useful optical systems.
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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 University
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`of Arizona from 1995 to 2001. Prior to joining the University of Arizona faculty,
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`SMR USA
`Exhibit 1002
`Page 006
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
`
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`I was a member of the technical staff of AT&T Bell Laboratories from 1990 to
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`1995. From 1984 to 1987, I was a Research Assistant, and from 1988 to 1990, I
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`was a Research Associate, in the Optical Sciences Center at the University of
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`Arizona. From 1976 to 1984, I was an optician at the Institute of Astronomy at the
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`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 from
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`the University of Arizona in 1987, and a Ph.D. degree in Optical Sciences from the
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`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.
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`At the University of Arizona, I have taught the courses Lens Design
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`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
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`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
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`students how to design mirrors, including their field of view specifications, how to
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`grind, polish, and test aspheric mirrors, how to mount mirrors properly so that their
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`physical integrity is preserved under a variety of loads, and how to align mirrors. I
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`SMR USA
`Exhibit 1002
`Page 007
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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`have experience in flat, curved, and aspheric mirror fabrication and mounting, and
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`in the chemical and vacuum deposition of reflective metals on substrates.
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`I have directed several theses and dissertations in the areas of lens and
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`mirror design. I have lectured regarding my work, and have published, along with
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`students and colleagues, over one hundred scientific papers in the area of optics.
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`These include technical papers, patents, and thesis research done under my
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`direction, related to lens and mirror design. For example, “Two-mirror telescope
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`design with third-order coma insensitive to decenter misalignment,” “Double-
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`curvature Surfaces in Mirror System Design,” "Four-mirror optical system for
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`large telescopes," and "Flat-field, anastigmatic, four-mirror optical system for
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`large telescopes."
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`As part of my research responsibilities at the University of Arizona, I
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`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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`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 several
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`patents and patent applications related to optical mirrors.
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`I have been a topical editor and reviewer for the peer-reviewed journal
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`Applied Optics. I am a fellow of the International Society for Optics and Photonics
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`SMR USA
`Exhibit 1002
`Page 008
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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`(SPIE), a fellow of the Optical Society of America (OSA), and a lifetime member
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`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:
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`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
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`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.
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`II.
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`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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`Ex. No.
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`Description
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`1001
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`U.S. Patent No. 8,128,244 (the “’244 patent”)
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`4
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`SMR USA
`Exhibit 1002
`Page 009
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`1003
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1016
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`1017
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`1019
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`1020
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`1032
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`1033
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`1034
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`1035
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`1037
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`1038
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`1039
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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`Curriculum Vitae of Jose Sasian
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`U.S. Patent No. 7,934,843 (the “’843 patent”)
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`File History for U.S. Patent No. 7,934,843 (the “’843 FH”)
`
`Second Amended Complaint, Magna Mirrors of America, Inc. v.
`Samvardhana Motherson Reflectec Group Holdings Ltd., et al., No.
`1:17-CV-77 (W.D. Mich., Aug. 17, 2017) (“2d Am. Compl.”)
`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. 6,522,451 (the “’451 patent”)
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`U.S. Patent No. 6,717,712 (the “’712 patent”)
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`U.S. Patent Application No. 12/851,045 (the “’045 application”)
`
`Computer-generated document comparison showing differences in
`the ’045 and ’666 applications
`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”)
`
`Certified English Translation of French Republic Patent Application
`Publication No. 2,650,982 (“Silvestre”)
`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)
`
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`SMR USA
`Exhibit 1002
`Page 010
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`1040
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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`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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`person of ordinary skill in the art would have understood the claims of the ’244
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`patent at the relevant time. 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 ’244 patent to
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`be described in the ’666 application. Nevertheless, because I understand that the
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`’244 patent attempts to claim priority to a provisional application filed in 2003, I
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`was also asked to consider a date of 2003 for the purpose of determining how a
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`person or ordinary skill would have understood the claims. The choice of 2003 vs.
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`a later date did not affect my analysis of the meaning of the claim terms.
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`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 ‘244 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 ’244 patent requires knowledge of geometrical optics,
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`Exhibit 1002
`Page 011
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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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 Optics,
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`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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`IV. BACKGROUND LAW
`A. 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)
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`describes the claimed invention, with all of its limitations, in a manner that is
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`understandable to one of ordinary skill in the art and therefore shows that the
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`inventor actually invented the invention claimed. I also understand that describing
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`an obvious variant of the claimed invention is not sufficient. The person of ordinary
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`skill must conclude that the application itself (including its as-filed claims) fully
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`SMR USA
`Exhibit 1002
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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`sets forth the claimed invention, by describing it in words, figures, diagrams, and
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`the like.
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`B.
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`Incorporation By Reference
` With respect to incorporation by reference in the context of patents
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`and patent applications, I understand that in order for a first document to validly
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`incorporate material by reference from a second document, the first document must
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`state with detailed particularity what material is incorporated and identify where in
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`the second document that material may be found. I further understand that the
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`Board evaluates the particularity required for sufficient incorporation by reference
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`from the point of view of a POSA: material is validly incorporated if a POSA
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`would understand a document to sufficiently incorporate subject matter by
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`reference.
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`C. 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
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`every element of the claim, expressly or inherently. In analyzing anticipation, I
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`understand that it is important to consider the scope of the claims, the level of skill
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`in the relevant art, the scope and content of the prior art, and the differences
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`between the prior art and the claims.
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`8
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`SMR USA
`Exhibit 1002
`Page 013
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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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
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`of the claim would have been obvious at the time the claimed invention was made.
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`In analyzing obviousness, I understand that it is important to consider the scope of
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`the claims, the level of skill in the relevant art, the scope and content of the prior
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`art, the differences between the prior art and the claims, and any secondary
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`considerations.
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`I understand that when the claimed subject matter involves combining
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`pre-existing elements to yield no more than one would expect from such an
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`arrangement, the combination would have been obvious. I also understand that in
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`assessing whether a claim would have been obvious one must consider whether the
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`claimed improvement is more than the predictable use of prior art elements
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`according to their established functions. I understand that there need not be a
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`precise teaching in the prior art directed to the specific subject matter of a claim
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`because one can take account of the inferences and creative steps that a person of
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`skill in the art would employ. I further understand that a person of ordinary skill
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`is a person of ordinary creativity, not an automaton.
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`I understand that obviousness cannot be based on the hindsight
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`combination of components selectively culled from the prior art. I understand that
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`SMR USA
`Exhibit 1002
`Page 014
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
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`in an obviousness analysis, neither the motivation nor the avowed purpose of the
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`inventors controls the inquiry. Any need or problem known in the field at the time
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`of the invention and addressed by the patent can provide a reason for combining
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`elements. For example, I understand that it is important to consider whether there
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`existed at the time of the invention a known problem for which there was an
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`obvious solution encompassed by the patent’s claims. I understand that known
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`techniques can have obvious uses beyond their primary purposes, and that in many
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`cases a person of ordinary skill can fit the teachings of multiple pieces of prior art
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`together like pieces of a puzzle.
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`I understand that, when there is a reason to solve a problem and there
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`are a finite number of identified, predictable solutions, a person of ordinary skill
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`has good reason to pursue the known options within his or her technical grasp. I
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`further understand that, if this leads to the anticipated success, it is likely the
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`product not of innovation but of ordinary skill and common sense, which bears on
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`whether the claim would have been obvious.
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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
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`was solved by an invention, evidence that others copied an invention, or evidence
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`that an invention achieved a surprising result. I further understand that such
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`evidence must have a nexus, or causal relationship to the elements of a claim, in
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`SMR USA
`Exhibit 1002
`Page 015
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`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
`
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`order to be relevant. I am unaware of any such secondary considerations for the
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`’244 patent.
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`V.
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`SUMMARY OF OPINIONS
` As I describe in further detail below, my opinion is that the claims of
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`the ’244 patent, all of which are directed to an automotive exterior rear sideview
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`mirror assembly containing a flat primary mirror and a curved auxiliary mirror,
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`lack written description support in the application to which the ’244 patent claims
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`priority – the ’666 application. The ’666 application is directed at a single mirror
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`assembly rather than a two mirror assembly, but contains a brief statement of
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`incorporation by reference relating to the ’712 patent, which discloses a two mirror
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`assembly. As I describe herein, a POSA would not have understood this brief
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`statement to constitute incorporation by reference of the ’712 patent’s two-mirror
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`assembly. Further, even if the ’712 patent’s two mirror assembly were fully
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`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 ’244 patent are
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`anticipated or would have been rendered obvious by the prior art references
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`disclosed herein. Specifically, it is my opinion that claims 1-26 are anticipated by
`
`11
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`SMR USA
`Exhibit 1002
`Page 016
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`
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
`
`
`the ’026 publication and that claims 23-26 would have been rendered obvious by
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`the combination of Henion, Platzer, and Catlin.
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`VI. THE ’244 PATENT
`I have reviewed the ’244 patent. The ’244 patent is entitled to an
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`
`effective filing date of August 5, 2010 or later because the claims of the ’244 patent
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`do not have written description support in the previous patent applications in the
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`’244 patent’s family, as illustrated below.
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`A. The ’244 Patent’s Disclosure
` The ’244 patent discloses a driver’s-side exterior sideview mirror
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`system for automobiles. See, e.g., ’244 patent at 1:66-3:35 & Fig. 16. The system
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`is comprised of an assembly containing two separate mirrors – a flat (plano-
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`reflective) primary mirror for viewing areas rearward and sideward of the driver,
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`and an auxiliary curved or secondary mirror providing a wide-angled field of view
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`(“FOV”) capable of viewing into the area not covered by the primary mirror (the
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`driver’s “blind spot”). ’244 patent at 1:66-3:35 & Figs. 11, 13-16. The primary
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`and secondary mirrors may be at an angle relative to each other to provide the
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`driver a wider total field of view. Id. at 1:66-3:35 & Figs. 11, 14. This angling may
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`be accomplished by placing the primary and secondary mirrors on separate, angled
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`portions of a molded plastic backing plate. Id. at 1:66-3:35 & Figs. 3, 6.
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`12
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`SMR USA
`Exhibit 1002
`Page 017
`
`
`
`
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
`
`B. Application For The ’843 Patent
`I have considered the application for the ’843 patent (Appl. No.
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`
`12/851,045). I understand that the ’244 patent claims priority through the ’843
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`patent, which I understand to be important to understanding the ’244 patent’s
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`priority date.
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`
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`I understand that applicant 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 1145.
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`The application noted that it was a continuation of the application for the ’154
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`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 into
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`the ’045 application.
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`
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`I have reviewed a computer-generated comparison of the ’045 and
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`’666 applications that shows that the majority of the ’712 patent’s specification
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`was copied into the ’045 application that is attached as an exhibit to the petition
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`and listed in the table of materials reviewed.
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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.
`
`13
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`SMR USA
`Exhibit 1002
`Page 018
`
`
`
`
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
`
` This incorporated the disclosure that described an exterior sideview
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`mirror system comprising two separate mirrors – the primary and auxiliary mirrors
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`claimed by the ’843 patent.
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`VII. THE ’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR THE INDEPENDENT CLAIMS OF THE ’244
`PATENT
`I understand that the ’244 patent claims priority through the ’154
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`
`patent. I understand that therefore, the application leading to the ’154 patent (App.
`
`No. 12/197,666 (the “’666 application”)) must provide written description support
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`for the claims of the ’244 patent. Thus, throughout this discussion, I will also refer
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`to the disclosures of the ’666 application, in addition to the patents where
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`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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`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
`
`14
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`SMR USA
`Exhibit 1002
`Page 019
`
`
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,128,244
`
`
`Embodiments section (¶¶ 27-48) describes specific aspects of embodiments of the
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`invention.
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` The first sentence of the Summary of the Invention states: “The
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`present invention provides a molded wide angle or multi-radius substrate for a
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`reflective element.” ’666 application at ¶ 6. Consistent with the title of the
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`application, the first