Paper 12
`Trials@uspto.gov
`571-272-7822 Entered: July 26, 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 IPR2018-00520
`Patent 8,267,534 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)
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 26, 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 IPR2018-00520
`Patent 8,267,534 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)
`
`
`
`IPR2018-00520
`Patent 8,267,534 B2
`
`I. INTRODUCTION
`SMR Automotive Systems USA, Inc. (“Petitioner”)1 filed a Petition
`for inter partes review of claims 1–20 of U.S. Patent No. 8,267,534 B2
`(Ex. 1001, “the ’534 patent”). Paper 2 (“Pet.”). Magna Mirrors of America,
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”). Institution of an inter partes review is authorized, 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 1–20 of the ’534 patent.
`
`A. Related Matters
`The parties indicate that the ’534 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 6, 1. The parties also identify numerous other petitions for inter
`partes review filed by Petitioner challenging claims of patents related to the
`’534 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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`IPR2018-00520
`Patent 8,267,534 B2
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`
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`IPR2018-00491
`IPR2018-00505
`IPR2018-00506
`IPR2018-00517
`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. 8,128,244 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 6, 1.
`
`B. The ’534 Patent
`The ’534 patent is directed to an automobile mirror. Ex. 1001,
`Abstract. The claims recite an “exterior rearview mirror assembly.” Id. at
`cols. 27–30. The mirror assembly includes a plano reflective element and an
`auxiliary reflective element mounted adjacent to each other in a side-by-side
`relationship. Id.; Pet. 5–6. Figure 16 of the ’534 patent, reproduced below,
`is illustrative of the invention:
`
`
`
`
`2 See IPR2018-00931, Paper 1, 3.
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`3
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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 15:59–64.
`Reflective element 312 comprises a plano reflective element 350, such as a
`flat reflector coated glass substrate. Id. at 16:21–23. Reflective element 314
`comprises a radiused reflective element, preferably, a multiradiused
`reflective element 355 having a multiradiused curvature. Id. at 17:46–48.
`
`C. Illustrative Claims
`Petitioner challenges all claims (i.e., claims 1–20) of the ’534 patent.
`Claims 1, 7, and 13 are independent. Claims 1 and 13 are reproduced below
`(with Petitioner’s notations included for clarity).
`1. An exterior rearview mirror assembly suitable for a
`motor vehicle, said exterior
`rearview mirror assembly
`comprising:
`[a] a bracket fixedly secured to the motor vehicle;
`[b] a mirror casing secured to said bracket, said mirror
`casing defining a primary opening;
`[c] a single mirror support movably secured within said
`mirror casing disposed adjacent said primary opening;
`[d] a primary mirror fixedly secured to said single mirror
`support and disposed within said primary opening for providing
`a view rearward of the motor vehicle through a primary field of
`view; and
`[e] a spotting mirror fixedly secured to said single mirror
`support and disposed adjacent said primary mirror, said spotting
`mirror defined by a single radius of curvature differing from said
`primary mirror such that said spotting mirror provides a second
`field of view rearward of the motor vehicle, such that said first
`field of view of said primary mirror overlaps said second field of
`view of said spotting mirror.
`
`4
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`IPR2018-00520
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`
`13. An exterior rearview mirror assembly for a motor
`vehicle, said exterior rearview mirror assembly comprising:
`[a] a bracket fixedly secured to the motor vehicle;
`[b] a mirror casing secured to said bracket, said mirror
`casing defining a primary opening;
`[c] a single mirror support movably secured within said
`mirror casing disposed adjacent said primary opening;
`[d] a primary mirror fixedly secured to said single mirror
`support and disposed within said primary opening for providing
`a view rearward of the motor vehicle through a primary field of
`view;
`
`[e] a spotting mirror fixedly secured to said single mirror
`support and disposed adjacent said primary mirror, said spotting
`mirror defined by a single radius of curvature differing from said
`primary mirror such that said spotting mirror provides a second
`field of view rearward of the motor vehicle, such that said
`primary field of view of said primary mirror overlaps said second
`field of view of said spotting mirror;
`[f] wherein said spotting mirror is at an angle relative to
`said primary mirror; and
`[g] wherein said primary mirror comprises one of (a) a
`generally flat glass substrate having a surface coated with a
`metallic reflector coating and (b) a generally flat polymeric
`substrate having a thin glass element applied to a surface thereof
`and with an opposing surface thereof having a reflecting layer
`applied thereto.
`Pet. 63, 65; Ex. 1001, 27:61–28:12, 29:7–30:2.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–20 are unpatentable based on the
`following grounds (Pet. 4–5):
`Reference(s)
`The ’026 publication3
`Henion4 and Platzer5
`
`
`Challenged Claims
`1–20
`13 and 20
`
`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).
`Neither party proposes we expressly construe any claim term. Pet. 6;
`Prelim. Resp. 6–7. For purposes of this decision, we need not do so. 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”);
`
`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”).
`
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`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
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`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.” Pet. 6; 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.
`
`The levels of ordinary skill proposed by the parties differ with respect
`to work experience. Mr. Nranian’s description of the person of ordinary
`skill in the art requires a person to have had two to three years of experience
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`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 are
`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 because Dr. Sasian does not have experience in the automotive industry.
`Prelim. Resp. 34–35. Patent Owner further argues that the problems
`addressed by the ’534 patent “would not be familiar to a person with an
`optics degree” such as Dr. Sasian. Id. at 35.
`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
`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
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`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 or no weight.
`E. Asserted Anticipation of
`Claims 1–20 by the ’026 Publication
`1. Overview
`Petitioner contends that claims 1–20 are unpatentable under 35 U.S.C.
`§§ 102(a), (b), and (e) as anticipated by the ’026 publication. Pet. 33–44.
`The ’026 publication is a United States Patent Application Publication, filed
`December 20, 2000 and published June 13, 2002. Ex. 1011, 1. The ’026
`publication lists Niall R. Lynam, John O. Lindahl, and Hahns Y. Fuchs as
`inventors. Id. The application that issued as the ’534 patent was filed
`December 23, 2011, lists Niall R. Lynam as the sole inventor, and includes
`the following statement of “Related U.S. Application Data” (Ex. 1001, 1):
`
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`Continuation of application No. 12/911,274, filed on Oct. 25,
`2010, now Pat. No. 8,128,243, which is a continuation of
`application No. 12/851,045, filed on Aug. 5, 2010, now Pat. No.
`7,934,843, which
`is a continuation of application No.
`12/197,666, filed on Aug. 25, 2008, now Pat. No. 7,842,154,
`which is a division of application No. 10/709,434, filed on May
`5, 2004, now Pat. No. 7,420,756. [ ] Provisional application No.
`60/471,872, filed on May 20, 2003.
`Petitioner’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 ’534 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. 7–8. Petitioner explains that the
`’534 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 ’534
`patent’s claims.” Id. at 8.
`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 ’534 patent. Pet. 7. Petitioner asserts that
`the ’026 publication is “by another” because it names three inventors
`(Lindahl, Fuchs, and Lynam) whereas the ’534 patent names just one
`(Lynam). Id.
`Patent Owner responds that each of the foregoing issues was
`considered by the Patent Office repeatedly during prosecution of the ’534
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`patent and its family, and, therefore, we should deny institution under 35
`U.S.C. § 325(d). Prelim. Resp. 7–24.
`For the reasons that follow, we determine that the Patent Office
`considered during prosecution both (1) whether the ’534 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 ’534 patent6
`The ’843 patent is the grandparent to the ’534 patent and also lists
`Niall R. Lynam as the sole inventor. Ex. 1008, 1.7 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
`present application and each of the parent patent applications . . . have
`identical disclosures” and “incorporate by reference U.S. Patent Nos.
`
`
`6 Petitioner provides a chart illustrating the relevant dates and relationships
`between the various patents and applications discussed herein. Pet. 11.
`7 On March 24, 2011, the Applicant filed a terminal disclaimer on the ’843
`patent. Ex. 1006, 128–133.
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`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.8 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 ’534 patent is similar to that of the ’843
`patent. The same Examiner rejected the claims 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, 146–49.
`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. Patent Nos. 6,522,451 and 6,717,712.” Id. at 190–92. In
`addition, the Applicant submitted a declaration of Niall R. Lynam similar to
`
`
`8 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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`the one submitted during prosecution of the ’843 patent. Id. at 195–96. The
`Examiner then allowed the claims. Id. at 284.
`3. Discussion
`Petitioner asserts that the ’534 patent is entitled to the filing date of
`the ’843 patent, but is not entitled to the filing date of any preceding
`applications. Pet. 7. 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 ’534 patent. Id. at 8. 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 20–32.
`Petitioner argues that the “examiner did not explain his reasoning” in
`allowing the claims. Id. at 18.
`
`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 ’534 patent. Pet. 20–24. That passage, reproduced from the ’666
`application, is as follows.
`Reflective element 12 may comprise an aspheric or multi-radius
`or wide angle single element reflective element substrate. The
`reflective element 12 may provide a field of view similar to the
`plano-auxiliary reflective element assembly disclosed in U.S.
`Pat. Nos. 6,522,451 and 6,717,712, which are hereby
`incorporated herein by reference.
`Ex. 1014 ¶ 28 (emphasis added).
`
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`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. 20–24.
`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 22 (citing
`Ex. 1014 ¶¶ 1, 45, 46).
`Patent Owner responds that because the Office considered the issue of
`whether the ’534 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. 7, 13–16. Specifically,
`Patent Owner argues that the ’026 publication “is not prior art to the ‘534
`patent and the question has been considered eight times, by two different
`examiners.” Id. at 13. 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 17–20.
`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
`because, the same or substantially the same prior art or arguments previously
`were presented to the Office.”
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`We have considered the prosecution history of the ’534 patent and
`related patents, including the ’843 patent. We determine that the issue of
`whether the ’534 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. 18. 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. 14–16), 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 ’534 patent’s claims.
`Pet. 26–32. The Examiner of the applications that matured into the ’843 and
`’534 patents would have had to consider whether the ’666 application
`provides written description support for the ’534 patent’s claims, in
`
`16
`
`
`
`IPR2018-00520
`Patent 8,267,534 B2
`
`determining that the ’534 patent was entitled to the priority date asserted by
`the Applicant. See, e.g., Ex. 1009, 20–23.9 Moreover, we find persuasive
`Patent Owner’s arguments (Prelim. Resp. 19–24) 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. 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 ’534 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 ’534 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. 7. Petitioner argues
`that during prosecution of the ’534 patent, the issue of whether relevant
`material from the ’026 publication is by the same inventor as the ’534 patent
`was not raised before the Office. Id. at 13.
`Patent Owner argues that the ’026 publication is not prior art pursuant
`to §§ 102(a) and (e) because it is not the work of another and that the issue
`
`
`9 By indicating that the affidavit overcame the ’026 publication as prior art,
`the Examiner implicitly found that the Applicant had shown sufficiently that
`the claims were entitled to the ’872 provisional application’s filing date of
`May 20, 2003.
`
`17
`
`
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`IPR2018-00520
`Patent 8,267,534 B2
`
`was raised previously before the Office. Prelim. Resp. 21–24. In particular,
`Patent Owner argues that the declaration of Dr. Lynam submitted by Patent
`Owner during prosecution of the ’534 patent is “sufficient to show that
`Lynam ’026 was not the work of another because the [two other] co-
`inventors listed on Lynam ’026 were not involved in the conception of the
`subject matter of the ’534 patent claims, which were solely conceived of by
`Dr. Lynam.” Id. at 22; Ex. 1006, 195–96. Patent Owner also argues that
`during prosecution of the ’843 patent, the Examiner determined that the ’026
`publication was not prior art because it was not the work of another. Prelim.
`Resp. 11.
`We have considered the prosecution history of both the ’843 patent
`and the ’534 patent, along with the Lynam declarations filed in those cases.
`We determine that the issue of whether the ’026 publication is prior art
`under 35 U.S.C. §§ 102(a) and (e) was considered by the Office. During
`prosecution of the ’843 patent, the Examiner considered the Lynam
`declaration and determined that the declaration “proves that Niall Lynam
`conceived or invented the subject matter disclosed in the patent application
`publication.” Ex. 1009, 23 (emphasis added). The Examiner considered a
`similar Lynam declaration during prosecution of the ’534 patent, and
`concluded that the declaration “is sufficient to overcome the Lynam et al US
`2002/0072026” reference. Ex. 1006, 284. For these reasons, we disagree
`with Petitioner that the Office did not previously consider the issue of
`whether the ’026 publication is “by another.”
`For the foregoing reasons, we exercise our discretion under 35 U.S.C.
`§ 325(d) and decline to institute inter partes review of claims 1–20 on the
`
`18
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`IPR2018-00520
`Patent 8,267,534 B2
`
`asserted ground that those claims are unpatentable under 35 U.S.C.
`§§ 102(a), (b), and (e) as anticipated by the ’026 publication.
`
`F. Asserted Obviousness of Claims 13 and 20
`over Henion and Platzer
`Petitioner asserts claim 13 and its dependent claim 20 “cover
`variations on the same basic structure: a sideview mirror with a flat primary
`mirror and a curved spotting mirror both mounted on the same backing
`plate” and “provid[ing] specific fields of view (‘FOVs’) relative to the
`vehicle and/or each other.” Pet. 45; see supra Sect. I.C. (claim 13).
`Petitioner argues claims 13 and 20 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Henion and Platzer. Pet. 44–61. In support of its
`argument, Petitioner relies upon the testimony of Dr. Sasian (Ex. 1002). Id.
`
`1. Henion
`Henion describes a “side view mirror with integral lighting.” Ex.
`1012, Title (formatting omitted). Petitioner’s annotated Figures 2 and 3 of
`Henion are reproduced below. Pet. 53.
`
`Petitioner’s annotated Henion Figures 2 and 3 depict a mirror
`assembly. As seen in Figures 2 and 3, mirror assembly 10 includes housing
`
`
`
`19
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`Patent 8,267,534 B2
`
`16 pivotally supported on arm 18 extending outwardly from triangular
`shaped mounting plate 20. Ex. 1012, 5:9–14. A first reflective element 32
`is preferably a flat mirror to provide a generally unaltered field of view. Id.
`at 5:22–6:1. Backing plate 34 is secured within housing 16 and serves to
`movably support first reflective element 32 within the opening. Id. at 6:1–4.
`Backing plate 34 also supports second reflective element 36 and various
`light structures. Id. at 6:7–13. Second reflective element 36 is preferably a
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