Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`In re Inter Partes Review of:
`)
`
`U.S. Patent No. 8,783,882
`)
`
`Issued: July 22, 2014
`)
`
`Application No.: 14/054,004
`)
`
`
`For: Extended Field of View Exterior Mirror Element For Vehicle
`
`FILED VIA E2E
`
`
`
`
`
`
`
`
`
`DECLARATION OF DR. JOSE SASIAN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,783,882
`
`
`
`SMR USA
`Exhibit 1002
`Page 001
`
`

`

`
`
`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`TABLE OF CONTENTS
`I.
`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED ............ 4
`II.
`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED
`IN THIS DECLARATION ............................................................................. 7
`IV. BACKGROUND LAW .................................................................................. 8
`A. Written Description .............................................................................. 8
`B.
`Incorporation By Reference .................................................................. 8
`C.
`Understanding Of Legal Principles Relevant To Anticipation
`And Obviousness .................................................................................. 9
`SUMMARY OF OPINIONS ........................................................................ 11
`V.
`VI. THE ’882 PATENT ...................................................................................... 12
`A.
`The ’882 Patent’s Disclosure .............................................................. 13
`B.
`Application For The ’843 Patent ........................................................ 13
`VII. THE ’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR THE CLAIMS OF THE ’882 PATENT ............................ 14
`A. A POSA Would Not Understand The 666 Patent Application
`To Incorporate With Particularity The Two-Mirror Assembly
`Of The ’712 And ’451 Patent Family ................................................. 21
`A POSA Would Not Understand The ’666 Application To
`Support The ’882 Patent’s Claims Even If The ’451 And ’712
`Patents Were Fully Incorporated By Reference ................................. 27
`The Claims Of The ’882 Patent Are Directed To A Two-
`Mirror System ..................................................................................... 37
`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
`
`B.
`
`C.
`
`i
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`SMR USA
`Exhibit 1002
`Page 002
`
`

`

`
`
`X.
`
`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`1.
`
`B.
`
`U.S. Patent Application Publication No. 2002/0072026
`(“the ’026 publication”) ............................................................ 40
`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
`4.
`U.S. Pat. No. 6,984,048 (“Yamabe”) ....................................... 43
`5.
`FR 2650982 (“Silvestre”) ......................................................... 44
`Background Evidence ......................................................................... 45
`C.
`THE Claims 1-20 OF THE ’882 ARE ANTICIPATED BY THE
`’026 PUBLICATION .................................................................................... 45
`A.
`Claim 1 ................................................................................................ 46
`1.
`Preamble, [a], [b], [l] ................................................................ 46
`2.
`[c] A electrically-operated actuator .......................................... 49
`3.
`[k] Backing plate mounted to actuator ..................................... 50
`4.
`[d], [f] Support portions and capable of supporting ................. 52
`5.
`[e], [h] mirror elements ............................................................ 55
`6.
`[g] Mounted adjacently ............................................................ 55
`7.
`[i], [j] Different and overlapping rearward fields of
`view and directed downwardly ................................................ 59
`[n], [o] “overall rearward field of view” .................................. 60
`8.
`[m] Reflective Element Substrates ........................................... 62
`9.
`Claims 2, 3, 7, 11, 14 .......................................................................... 63
`Claim 4 - rearward field of view ........................................................ 70
`Claim 5 - tilting ................................................................................... 73
`Claim 6 - blind spot ............................................................................ 74
`Claim 8 – overlapping fields of view ................................................. 75
`Claim 9 – fixed reflectance ................................................................. 76
`Claim 10 – attachment ........................................................................ 77
`Claim 12 - heater element ................................................................... 78
`Claim 13 – metallic reflector coating types ........................................ 79
`Claim 15 .............................................................................................. 80
`1.
`Preamble, 15[a]-[f], [h], [j]-[q] ................................................. 80
`2.
`[g] Metallic Reflector ............................................................... 82
`3.
`[i] Matching curvature .............................................................. 83
`Claims 16-17 ....................................................................................... 84
`Independent Claim 18 ......................................................................... 86
`
`B.
`C.
`D.
`E.
`F.
`G.
`H.
`I.
`J.
`K.
`
`L.
`M.
`
`ii
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`SMR USA
`Exhibit 1002
`Page 003
`
`

`

`
`
`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`1.
`Preamble, 18[a]-[f], [h]-[p] ...................................................... 86
`[g] Fixed reflectance ................................................................. 89
`2.
`Claims 19-20 ....................................................................................... 89
`N.
`XI. CLAIMS 1, 2, 3, 18, AND 20 WOULD HAVE BEEN OBVIOUS
`OVER HENION, PLATZER, CATLIN, SILVESTRE, AND
`YAMABE ..................................................................................................... 91
`A.
`Claim 1 ................................................................................................ 91
`1.
`Preamble, [a] Mirror Housing .................................................. 91
`2.
`[b] Backing Plate ...................................................................... 93
`3.
`[c] Actuator ............................................................................... 94
`4.
`[d] Plano Mirror ........................................................................ 95
`5.
`[f] Auxiliary Mirror .................................................................. 98
`6.
`[e], [h] Rearward Field of View ............................................. 100
`7.
`[g] Mounted Adjacently, Side-By-Side, And Not
`Superimposed ......................................................................... 102
`[i] Overlapping Fields of View .............................................. 106
`8.
`[j] Angled ................................................................................ 109
`9.
`[k] Common Actuator ............................................................ 111
`10.
`[l] Polymeric Molding ............................................................ 114
`11.
`[m] Reflective Element Substrate .......................................... 117
`12.
`[n] At Least About 25 Degrees .............................................. 120
`13.
`[o] Less Than About 50 Degrees ............................................ 123
`14.
`Claim 2 .............................................................................................. 124
`1.
`Preamble and [a] Convex-Curved Substrate, Reflector
`Coating ................................................................................... 124
`[b] Convex-Curved Backing Plate ......................................... 126
`2.
`[c] Spherical Curvature .......................................................... 127
`3.
`Claim 3 .............................................................................................. 129
`1.
`Spherical Backing Plate .......................................................... 129
`Claim 18 ............................................................................................ 130
`1.
`Preamble and [a]-[f], [h]-[i], [k]-[p] ....................................... 130
`2.
`[g] Fixed Reflectance ............................................................. 132
`3.
`[j] About 2 to 20 Degrees ....................................................... 134
`Claim 20 ............................................................................................ 144
`E.
`XII. CONCLUSION ........................................................................................... 151
`
`
`D.
`
`B.
`
`C.
`
`iii
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`SMR USA
`Exhibit 1002
`Page 004
`
`

`

`
`I.
`
`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`INTRODUCTION AND QUALIFICATIONS
`I have been retained by SMR Automotive Systems USA Inc.
`
`
`(“SMR”) to provide my opinion concerning the validity of U.S. Patent No.
`
`8,783,882 (attached to the accompanying Petition and henceforth referred to as
`
`“the ‘882 patent”) in support of SMR’s Petition for Inter Partes Review of U.S.
`
`Patent No. 8,783,882.
`
`
`
`I have extensive academic and industry experience with optical
`
`engineering. Specifically, I have over thirty years of academic and industry
`
`experience in the field of optical sciences and optical engineering in general,
`
`including optical instrumentation, optical design, and optical fabrication and
`
`testing.
`
`
`
`I am currently a full-time, tenured Professor of Optical Sciences at
`
`the College of Optical Sciences at the University of Arizona in Tucson, Arizona,
`
`a position I have held since 2002. As a professor, I teach and perform research in
`
`the field of optical design. For example, I teach my students how to design lenses
`
`and mirrors and how to think about light so that they can design useful optical
`
`systems.
`
`
`
`As part of my academic and research responsibilities I am frequently
`
`involved with the design, fabrication, and testing of optical devices. Prior to
`
`receiving tenure, I was an Associate Professor of Optical Sciences at the
`
`1
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`SMR USA
`Exhibit 1002
`Page 005
`
`

`

`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`University of Arizona from 1995 to 2001. Prior to joining the University of
`
`Arizona faculty, I was a member of the technical staff of AT&T Bell
`
`Laboratories from 1990 to 1995. From 1984 to 1987, I was a Research Assistant,
`
`and from 1988 to 1990, I was a Research Associate, in the Optical Sciences
`
`Center at the University of Arizona. From 1976 to 1984, I was an optician at the
`
`Institute of Astronomy at the University of Mexico.
`
`
`
`I received a Bachelor of Science degree in Physics from the
`
`University of Mexico in 1982, a Master of Science degree in Optical Sciences
`
`from the University of Arizona in 1987, and a Ph.D. degree in Optical Sciences
`
`from the University of Arizona in 1988. My research areas include optical design,
`
`fabrication, and testing of optical instruments, astronomical optics, diffractive
`
`optics, opto-mechanical design, light in gemstones, lithography optics, and light
`
`propagation.
`
`
`
`At the University of Arizona, I have taught the courses Lens Design
`
`OPTI 517 (1997-present), Introduction to Aberrations OPTI 518 (2005-present),
`
`Advanced Lens Design OPTI 595A (2008, 2012, 2017), Illumination Optics
`
`Seminar (1997-2000), Introduction to Opto-mechanics OPTI 690 (1998, 2001,
`
`2003, 2004, 2005) and Optical Shop Practices OPTI 597A (1996-present). I teach
`
`students how to design mirrors, including their field of view specifications, how
`
`to grind, polish, and test aspheric mirrors, how to mount mirrors properly so that
`
`2
`
`SMR USA
`Exhibit 1002
`Page 006
`
`

`

`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`their physical integrity is preserved under a variety of loads, and how to align
`
`mirrors. I have experience in flat, curved, and aspheric mirror fabrication and
`
`mounting, and in the chemical and vacuum deposition of reflective metals on
`
`substrates.
`
`
`
`I have directed several theses and dissertations in the areas of lens
`
`and mirror design. I have lectured regarding my work, and have published, along
`
`with students and colleagues, over one hundred scientific papers in the area of
`
`optics. These include technical papers, patents, and thesis research done under
`
`my direction, related to lens and mirror design. For example, “Two-mirror
`
`telescope design with third-order coma insensitive to decenter misalignment,”
`
`“Double-curvature Surfaces in Mirror System Design,” "Four-mirror optical
`
`system for large telescopes," and "Flat-field, anastigmatic, four-mirror optical
`
`system for large telescopes."
`
`
`
`As part of my research responsibilities at the University of Arizona,
`
`I am often involved in projects that have included automotive optics, and mirrors
`
`and prism in periscopic systems.
`
`
`
`Since 1995, I have been a consultant and have provided to industry
`
`solutions to a variety of projects that include flat and curved mirrors and opto-
`
`mechanics design. I also have consulted in the area of plastic optics. I hold
`
`several patents and patent applications related to optical mirrors.
`
`3
`
`SMR USA
`Exhibit 1002
`Page 007
`
`

`

`
`
`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`
`I have been a topical editor and reviewer for the peer-reviewed
`
`journal Applied Optics. I am a fellow of the International Society for Optics and
`
`Photonics (SPIE), a fellow of the Optical Society of America (OSA), and a
`
`lifetime member of the Optical Society of India.
`
`
`
`I have served as a co-chair for the conferences "Novel Optical
`
`Systems: Design and Optimization" (1997-2006), "Optical systems alignment,
`
`tolerancing, and verification" (2007-2017), and “International Optical Design
`
`Conference,” (2002). I have taught in Japan (2014, 2016, and 2017) the course:
`
`Advanced Lens Design: Art and Science.
`
`
`
`I have been an editor of approximately 17 published conference
`
`proceedings from SPIE. I am the author of the book, "Introduction to Aberrations
`
`in Optical Imaging Systems," by Cambridge University Press, 2013. I am named
`
`as an inventor on approximately 12 U.S. patents.
`
` My curriculum vitae, which includes a more detailed summary of
`
`my background, experience, and publications, is attached to the accompanying
`
`Petition.
`
`II.
`
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED
` The opinions contained in this Declaration are based on the
`
`documents I reviewed and my knowledge and professional judgment. In forming
`
`the opinions expressed in this Declaration, I reviewed the following documents:
`
`4
`
`SMR USA
`Exhibit 1002
`Page 008
`
`

`

`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`
`Ex. No. Description
`
`1001
`
`1003
`
`1008
`
`1009
`
`1010
`
`1011
`
`U.S. Patent No. 8,783,882 (“the ’882 patent”)
`
`Curriculum Vitae of Dr. Jose Sasian
`
`U.S. Patent No. 7,934,843 (the “’843 patent”)
`
`File History for U.S. Patent No. 7,934,843 (the “’843 FH”)
`
`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”)
`
`1012 WO 2001/44013 (“Henion”)
`
`1013 WO 2001/81956 (“Platzer”)
`
`1014
`
`1016
`
`1017
`
`1019
`
`1020
`
`1032
`
`1033
`
`U.S. Patent Application No. 12/197,666 (the “’666 application”)
`
`U.S. Patent No. 6,522,451 (the “’451 patent”)
`
`U.S. Patent No. 6,717,712 (the “’712 patent”)
`
`U.S. Patent Application No. 12/851,045 (the “’045 application”)
`
`Computer-generated document comparison showing differences in
`the ’045 and ’666 applications
`
`Excerpts from JAMES MAXWELL, PLASTICS IN THE AUTOMOTIVE
`INDUSTRY 114 (Woodhead Publishing Limited 1994) (“Maxwell”)
`
`Excerpts from N. G. MCCRUM, C. P. BUCKLEY, & C. B. BUCKNALL,
`PRINCIPLES OF POLYMER ENGINEERING (Oxford Science Publications
`2d ed. 2011) (1997) (“Bucknall”)
`
`1034
`
`U.S. Patent No. 5,721,646 (“Catlin”)
`
`5
`
`SMR USA
`Exhibit 1002
`Page 009
`
`

`

`
`
`1037
`
`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`Certified English Translation of French Republic Patent No.
`2,650,982 (“Silvestre”)
`
`1038
`
`U.S. Patent No. 6,984,048 (“Yamabe”)
`
`1039
`
`1040
`
`
`
`G. Platzer, The Geometry of Automotive Rearview Mirrors – Why
`Blind Zones Exist and Strategies to Overcome Them, SAE Technical
`Paper 950601 (1995)
`
`NATIONAL HIGHWAY TRAFFIC SAFETY ADMINISTRATION, U.S. DEP’T
`OF TRANSPORTATION, DOC. NO. TP111V-00, LABORATORY TEST
`PROCEDURE FOR FMVSS 111 – REARVIEW MIRRORS (OTHER THAN
`SCHOOL BUSES) (October 28, 1999)
`
` My opinions are additionally guided by my appreciation of how a
`
`person of ordinary skill in the art would have understood the claims of the ’882
`
`patent at the relevant time. As discussed herein, in my opinion, a person of
`
`ordinary skill in the art would not have understood the claims of the ’882 patent
`
`to be described in the ’666 application. Nevertheless, because I understand that
`
`the ’882 patent attempts to claim priority to the application for U.S. Patent No.
`
`6,717,712, filed in 2003, I was also asked to consider a date of 2003 for the
`
`purpose of determining how a person or ordinary skill would have understood the
`
`claims. The choice of 2003 vs. a later date did not affect my analysis of the
`
`meaning of the claim terms.
`
`6
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`SMR USA
`Exhibit 1002
`Page 010
`
`

`

`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`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
`
`problems encountered in the art, prior art solutions, rapidity of innovation,
`
`sophistication of technology, and educational level of active workers in the field.
`
` The ’882 patent field of invention relates to side-view mirror
`
`assemblies for vehicles that include a main mirror and an auxiliary mirror. The
`
`problem addressed in the ’882 patent requires knowledge of geometrical optics,
`
`optical elements including flat and curved mirrors, optical specifications,
`
`alignment of optics, fabrication of optics, mechanical design, and visual optics.
`
` The relevant field, therefore, is comprised of people having an
`
`engineering degree or its equivalent. In particular, a person having ordinary skill
`
`in this art (“POSA”) will have had at the time of invention a M.Sc. 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. This description is approximate, and a higher level of education or skill
`
`may make up for less experience, and vice-versa, e.g., a B.S. in the above fields
`
`with 4-6 years of experience in the industry.
`
`7
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`SMR USA
`Exhibit 1002
`Page 011
`
`

`

`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`IV. BACKGROUND LAW
`A. Written Description
`I understand that a patent claim has sufficient written description
`
`
`support in a patent application when that application (including its as-filed
`
`claims) describes the claimed invention, with all of its limitations, in a manner
`
`that is understandable to one of ordinary skill in the art and therefore shows that
`
`the inventor actually invented the invention claimed. I also understand that
`
`describing an obvious variant of the claimed invention is not sufficient. The
`
`person of ordinary skill must conclude that the application itself (including its as-
`
`filed claims) fully sets forth the claimed invention, by describing it in words,
`
`figures, diagrams, and the like.
`
`B.
`
`Incorporation By Reference
` With respect to incorporation by reference in the context of patents
`
`and patent applications, I understand that in order for a first document to validly
`
`incorporate material by reference from a second document, the first document
`
`must state with detailed particularity what material is incorporated and identify
`
`where in the second document that material may be found. I further understand
`
`that the Board evaluates the particularity required for sufficient incorporation by
`
`reference from the point of view of a POSA: material is validly incorporated if a
`
`8
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`SMR USA
`Exhibit 1002
`Page 012
`
`

`

`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`POSA would understand a document to sufficiently incorporate subject matter by
`
`reference.
`
`C. Understanding Of Legal Principles Relevant To Anticipation
`And Obviousness
`I understand that a prior art reference can anticipate a patent claim
`
`
`
`when the prior art’s disclosure renders the claim’s disclosure not novel. I
`
`understand that in order to anticipate a patent claim, a prior art reference must
`
`teach every element of the claim, expressly or inherently. In analyzing
`
`anticipation, I understand that it is important to consider the scope of the claims,
`
`the level of skill in the relevant art, the scope and content of the prior art, and the
`
`differences between the prior art and the claims.
`
`
`
`I understand that a prior art reference can render a patent claim
`
`obvious to one of ordinary skill in the art if the differences between the subject
`
`matter set forth in the patent claim and the prior art are such that the subject
`
`matter of the claim would have been obvious at the time the claimed invention
`
`was made. In analyzing obviousness, I understand that it is important to consider
`
`the scope of the claims, the level of skill in the relevant art, the scope and content
`
`of the prior art, the differences between the prior art and the claims, and any
`
`secondary considerations.
`
`9
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`SMR USA
`Exhibit 1002
`Page 013
`
`

`

`
`
`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`
`I understand that when the claimed subject matter involves
`
`combining pre-existing elements to yield no more than one would expect from
`
`such an arrangement, the combination would have been obvious. I also
`
`understand that in assessing whether a claim would have been obvious one must
`
`consider whether the claimed improvement is more than the predictable use of
`
`prior art elements according to their established functions. I understand that there
`
`need not be a precise teaching in the prior art directed to the specific subject
`
`matter of a claim because one can take account of the inferences and creative
`
`steps that a person of skill in the art would employ. I further understand that a
`
`person of ordinary skill is a person of ordinary creativity, not an automaton.
`
`
`
`I understand that obviousness cannot be based on the hindsight
`
`combination of components selectively culled from the prior art. I understand
`
`that in an obviousness analysis, neither the motivation nor the avowed purpose of
`
`the inventors controls the inquiry. Any need or problem known in the field at the
`
`time of the invention and addressed by the patent can provide a reason for
`
`combining elements. For example, I understand that it is important to consider
`
`whether there existed at the time of the invention a known problem for which
`
`there was an obvious solution encompassed by the patent’s claims. I understand
`
`that known techniques can have obvious uses beyond their primary purposes, and
`
`10
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`SMR USA
`Exhibit 1002
`Page 014
`
`

`

`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`that in many cases a person of ordinary skill can fit the teachings of multiple
`
`pieces of prior art together like pieces of a puzzle.
`
`
`
`I understand that, when there is a reason to solve a problem and
`
`there are a finite number of identified, predictable solutions, a person of ordinary
`
`skill has good reason to pursue the known options within his or her technical
`
`grasp. I further understand that, if this leads to the anticipated success, it is likely
`
`the product not of innovation but of ordinary skill and common sense, which
`
`bears on whether the claim would have been obvious.
`
`
`
`I understand that secondary considerations can include, for example,
`
`evidence of commercial success of the invention, evidence of a long-felt need
`
`that was solved by an invention, evidence that others copied an invention, or
`
`evidence that an invention achieved a surprising result. I further understand that
`
`such evidence must have a nexus, or causal relationship to the elements of a
`
`claim, in order to be relevant. I am unaware of any such secondary
`
`considerations for the ’882 patent.
`
`V.
`
`SUMMARY OF OPINIONS
` As I describe in further detail below, my opinion is that the claims of
`
`the ’882 patent, all of which are directed to an automotive exterior rear sideview
`
`mirror assembly containing a flat primary mirror and a curved auxiliary mirror,
`
`lack written description support in the application to which the ’882 patent claims
`
`11
`
`SMR USA
`Exhibit 1002
`Page 015
`
`

`

`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`priority – the ’666 application. The ’666 application is directed at a single mirror
`
`assembly rather than a two-mirror assembly, but contains a brief statement of
`
`incorporation by reference relating to the ’712 patent, which discloses a two-
`
`mirror assembly. As I describe herein, a POSA would not have understood this
`
`brief statement to constitute incorporation by reference of the ’712 patent’s two-
`
`mirror assembly. Further, even if the ’712 patent’s two-mirror assembly were
`
`fully incorporated by reference into the ’666 application, a POSA would still not
`
`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 ’882 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 1-20 of the ’882
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`patent are anticipated by the ’026 publication; claim 1, 2, 3, 18, and 20 would
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`have been obvious over Henion, Platzer, Catlin, Silvestre, and Yamabe.
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`VI. THE ’882 PATENT
`I have reviewed the ’882 patent. The ’882 patent is entitled to an
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`effective filing date of August 5, 2010 or later because the claims of the ’882
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`patent do not have written description support in the previous patent applications
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`in the ’882 patent’s family, as illustrated below in the section describing the ’666
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`application and written description.
`
`12
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`SMR USA
`Exhibit 1002
`Page 016
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`

`

`
`
`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`A. The ’882 Patent’s Disclosure
` The ’882 patent discloses a driver’s-side exterior sideview mirror
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`system for automobiles. See, e.g., ’882 patent at 1:65-3:33 & Fig. 16. The
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`system is comprised of an assembly containing two separate mirrors – a flat
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`(plano-reflective) primary mirror for viewing areas rearward and sideward of the
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`driver, and an auxiliary curved or secondary mirror providing a wide-angled field
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`of view (“FOV”) capable of viewing into the area not covered by the primary
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`mirror (the driver’s “blind spot”). ’882 patent at 1:65-3:33 & Figs. 11, 13-16.
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`The primary and secondary mirrors may be at an angle relative to each other to
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`provide the driver a wider total field of view. Id. at 1:65-3:33 & Figs. 11, 14.
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`This angling may be accomplished by placing the primary and secondary mirrors
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`on separate, angled portions of a molded plastic backing plate. Id. at 1:65-3:33 &
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`Figs. 11, 14.
`
`B. Application For The ’843 Patent
`I have considered the application for the ’843 patent, which I
`
`
`understand to be important to understanding the ’882 patent’s priority date
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`because the ’882 patent claims priority to the ’843.
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`
`
`I understand that the applicant filed the application for the ’843
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`patent (Appl. No. 12/851/045, the “’045 application”) on August 5, 2010. ’843
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`13
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`SMR USA
`Exhibit 1002
`Page 017
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`

`

`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`FH 1145. The application noted that it was a continuation of the application for
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`the ’154 patent (the ’666 application). ’843 FH 1145.
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`
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`I am informed that the specification of the ’712 patent was copied
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`into the ’045 application.
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`
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`I have reviewed a computer-generated comparison of the ’045 and
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`’666 applications showing that the majority of the ’712 patent’s specification was
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`copied into the ’045 application that is attached as an exhibit to the petition and
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`listed the table of materials reviewed. (Ex. 1020).
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` This incorporation of the ’712 included the ’712 patent’s disclosure
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`of an exterior automotive rearview mirror assembly comprised of two separate
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`mirrors, one flat and one curved, whose combined FOVs provided a greater FOV
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`to the driver of the automobile. ’712 patent at 3:2-5:6, Figs. 3, 5, 6, and 15.
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` This incorporated disclosure described an exterior sideview mirror
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`system comprising two separate mirrors – the primary and auxiliary mirrors
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`claimed by the ’882 patent.
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`VII. THE ’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR THE CLAIMS OF THE ’882 PATENT
`I understand that the ’882 patent claims priority through the ’843
`
`
`patent, which claims priority through the ’154 patent. I understand that therefore,
`
`the application leading to the ’154 patent (App. No. 12/197,666 (the “’666
`
`14
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`SMR USA
`Exhibit 1002
`Page 018
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`

`

`Declaration of Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,783,882
`
`
`application”)) must provide written description support for the claims of the ’882
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`patent. Thus, throughout this discussion, I will also refer to the disclosures of the
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`’666 application, in addition to the patents where appropriate.
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` Reading the ’666 application, one of ordinary skill in the art would
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`plainly recognize that the invention disclosed is drawn to mirror assemblies that
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`use a single reflective element. There are many cues recognizable to one of
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`ordinary skill in the art that leads to this conclusion. Specifically, the title of the
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`application refers to a single “reflective element.” Additionally, one of ordinary
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`skill in the art reading the ’666 application would expect and recognize that the
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`Summary of the Invention section of the ’666 application (¶¶ 6-17) describes
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`general aspects of the invention as a whole, while Description of the Preferred
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`Embodiments section (¶¶ 27-48) describes specific aspects of embodiments of
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`the 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 sentence of the Summary of the Invention refers to a single
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`substrate. The second sentence of the Summary of the Invention further makes
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`the point, describing that the single “molded substrate” “comprises a polymeric
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`optical resin transparent material and has a curved exterior surface, which may
`
`15
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`SMR USA
`Exhibit 1002
`Page 019
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`

`

`Declaration of Jose Sasian In Support Of
`Petit