Paper 10
`Trials@uspto.gov
`571-272-7822 Entered: July 13, 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 IPR2018-00533
`Patent 8,783,882 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 13, 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 IPR2018-00533
`Patent 8,783,882 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`IPR2018-00533
`Patent 8,783,882 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. 8,783,882 B2
`(Ex. 1001, “the ’882 patent”). Paper 1 (“Pet.”). Magna Mirrors of
`America, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). Institution of an inter partes review is authorized 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). Upon consideration of the Petition and
`Preliminary Response, we decline to institute review of claims 1–20 of the
`’882 patent.
`
`A. Related Matters
`The parties indicate that the ’882 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 4, 1. The parties also identify numerous other petitions for inter
`partes review filed by Petitioner challenging claims of patents related to the
`’882 patent:
`IPR2018-00491
`IPR2018-00505
`IPR2018-00506
`IPR2018-00517
`IPR2018-00520
`IPR2018-00536
`
`1 Petitioner, SMR Automotive Systems USA, Inc., identifies several entities
`as real parties-in-interest. Pet. 2–3.
`
`U.S. Patent No. 7,934,843 B2
`U.S. Patent No. 8,591,077 B2
`U.S. Patent No. 8,591,047 B2
`U.S. Patent No. 8,128,244 B2
`U.S. Patent No. 8,267,534 B2
`U.S. Patent No. 8.550,642 B2
`
`2
`
`
`
`IPR2018-00533
`Patent 8,783,882 B2
`
`IPR2018-00541
`IPR2018-00545
`IPR2018-00931
`
`U.S. Patent No. 8,899,762 B2
`U.S. Patent No. 9,694,750 B2
`U.S. Patent No. 8,128,243 B22
`
`Pet. 3; see also Paper 4, 1.
`
`B. The ’882 Patent
`The ’882 patent is directed to an exterior sideview mirror. Ex. 1001,
`Abstract. The mirror includes a plano reflective element and an auxiliary
`reflective element mounted adjacent to each other in a side-by-side
`relationship. Id. Figure 16, reproduced below, is illustrative of the mirror.
`
`
`Figure 16 of the ’882 patent, reproduced above, shows an embodiment
`of a plano reflective element assembly. Ex. 1001, 4:22–23.
`
`As seen from the above, plano-auxiliary reflective element assembly
`310 includes a first reflective element 312 and an auxiliary reflective
`
`
`2 IPR2018-00931 was not identified by either party, but is related to this
`proceeding. IPR2018-00931, Paper 1, 3; Paper 4, 1.
`3
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`IPR2018-00533
`Patent 8,783,882 B2
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`element 314 supported in frame assembly 316. Id. at 16:23–27. Reflective
`element 312 comprises a plano reflective element 350, such as a flat
`reflector coated glass substrate. Id. at 16:52–54. Reflective element 314
`comprises a radiused reflective element, preferably, a multiradiused
`reflective element 355 having a multiradiused curvature. Id. at 18:10–12.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–20 of the ’882 patent. Claims 1, 15,
`and 18 are independent claims. Claim 1 is reproduced below.3
`
`1. An exterior sideview mirror assembly suitable for use
`on vehicle, said exterior sideview mirror assembly comprising:
`[a] a mirror housing;
`[b] a mirror backing plate element;
`[c] wherein said mirror backing plate element is movable
`within said mirror housing by an electrically-operable
`actuator;
`[d] a main plano mirror element fixedly disposed at a
`first portion of said mirror backing plate element;
`[e] said main plano mirror element having a first primary
`field of view rearward of a vehicle equipped with said
`exterior sideview mirror assembly;
`[f] an auxiliary non-plano curved mirror element fixedly
`disposed at a second portion of said mirror backing
`plate element;
`[g] wherein said main plano mirror element and said
`auxiliary non-plano curved mirror element are
`adjacently disposed at said mirror backing plate
`element in a side-by-side relationship and are not
`
`
`3 For expediency, Petitioner annotates claim 1 into limitations 1[a]–[o].
`Pet. 84–85. We adopt that format herein for ease of reference.
`4
`
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`IPR2018-00533
`Patent 8,783,882 B2
`
`superimposed with one mirror element on top of the
`other mirror element;
`[h] said auxiliary non-plano curved mirror element
`having a second auxiliary field of view rearward of
`the equipped vehicle;
`[i] wherein said first primary field of view of said main
`plano mirror element overlaps said second auxiliary
`field of view of said auxiliary non-plano curved
`mirror element;
`[j] wherein said auxiliary non-plano curved mirror
`element that is at said second portion of said mirror
`backing plate element is angled relative to said main
`plano mirror element that is at said first portion of
`said mirror backing plate element;
`[k] wherein said mirror backing plate element mounts to
`said actuator such that movement of said mirror
`backing plate element by said actuator simultaneously
`and similarly moves said main plano mirror element
`and said auxiliary non-plano curved mirror element;
`[l] wherein said mirror backing plate element comprises a
`polymeric molding;
`[m] wherein said main plano mirror element comprises a
`generally flat glass substrate having a surface coated
`with a metallic reflector coating;
`[n] wherein the overall rearward field of view of said main
`plano mirror element combined with said auxiliary
`nonplano curved mirror element is at least about 25
`degrees relative to the side of the equipped vehicle; and
`[o] wherein the overall rearward field of view of said main
`plano mirror element combined with said auxiliary
`nonplano curved mirror element is less than about 50
`degrees relative to the side of the equipped vehicle.
`Id. at 32:11–59 (annotations [a]–[o] added).
`
`5
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`IPR2018-00533
`Patent 8,783,882 B2
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`Basis
`§ 102
`
`§ 103(a)
`
`1, 2, 3, 18, and 20
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–20 are unpatentable based on the
`following grounds (Pet. 4):
`Reference(s)
`The ’026 publication4
`Henion,5 Platzer,6
`Catlin,7 Silvestre,8 and
`Yamabe9
`
`Challenged Claims
`1–20
`
`
`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 of the patent in which they appear. 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 Technology, Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
`
`
`4 U.S. Patent Application Publication No. 2002/0072026 A1, filed Dec. 20,
`2000, published June 13, 2002 (Ex. 1011, “the ’026 publication”).
`5 PCT International Publication No. WO 01/44013 A1, pub. June 21, 2001
`(Ex. 1012, “Henion”).
`6 PCT International Publication No. WO 01/81956 A1, pub. Nov. 1, 2001
`(Ex. 1013, “Platzer”).
`7 U.S. Patent No. 5,721,646, issued Feb. 24, 1998 (Ex. 1034, “Catlin”).
`8 French Republic Patent Application Publication No. 2,650,982, published
`Feb. 22, 1991 (Ex. 1037, “Silvestre”).
`9 U.S. Patent No. 6,984,048 B2, issued Jan. 10, 2006 (Ex. 1038, “Yamabe”).
`6
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`Petitioner proposes a construction for the term “side-by-side” that
`adopts a construction proposed by Patent Owner in the underlying litigation.
`Pet. 7. Patent Owner proposes a construction for “backing plate.” Prelim.
`Resp. 36–40. For purposes of this decision, we need not expressly construe
`any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 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
`
`7
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`IPR2018-00533
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`
`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).
`
`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. in Optics, Optical Engineering, or similar studies in a
`related field (e.g., Physics or Mechanical Engineering) with 2–3 years of
`experience in the optics/mechanical industry.” Ex. 1002 ¶ 18. Dr. Sasian
`further testifies that his description is approximate and “a higher level of
`education or skill may make up for less experience, and vice-versa.” Id.
`Patent Owner relies on the testimony of Mr. Michael Nranian, who disagrees
`with Dr. Sasian’s assessment and testifies that a person with ordinary skill in
`the art “would have had a M.S. in an engineering discipline relevant to
`automotive component design (e.g., electrical engineering, mechanical
`engineering, or optical engineering), as well as 2–3 years of experience in
`
`8
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`IPR2018-00533
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`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 that person to have had 2–3 years of experience in the
`automotive industry designing components for automobiles. Dr. Sasian’s
`description of the person of ordinary skill in the art is more flexible and
`requires the hypothetical person to have had 2–3 years of experience in the
`optics/mechanical industry. Moreover, Dr. Sasian testifies that more
`education can take the place of less 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, 1:36–43 (citing to 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
`mirrors in general)).
`D. Dr. Sasian Is Qualified To Testify
`Patent Owner argues Dr. Sasian’s Declaration should be accorded
`
`little weight because Dr. Sasian is not qualified to testify regarding what
`would have been known to a person of ordinary skill in the art, as he does
`not have experience in the automotive industry. Prelim. Resp. 42–44.
`As explained above, we do not agree that a person having ordinary
`skill in the art at the time of the invention must have had 2–3 years of
`experience in the automotive industry designing components for
`automobiles. 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. See, e.g., Ex. 1002 ¶¶ 2–12.
`Patent Owner argues that Dr. Sasian is a “person with an optics
`degree.” Prelim. Resp. 44. Dr. Sasian has much more experience and
`education than asserted by Patent Owner, which includes industry
`experience and involvement in projects that included automotive optics.
`Ex. 1002 ¶¶ 2–12. 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 are not persuaded that we should give the entirety of Dr. Sasian’s
`declaration little weight.
`
`E. 35 U.S.C. § 325(d)
`Overview
`In Ground 1, Petitioner contends claims 1–20 are unpatentable under
`35 U.S.C. §§ 102(a), (b), and (e) as anticipated by the ’026 publication. Pet.
`36–52.
`
`10
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`
`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
`’882 patent lists Niall R. Lynam as the sole inventor, was filed October 15,
`2013, and contains the following benefit claims:
`Continuation of application No. 13/776,247, filed on Feb. 25,
`2013, now Pat. No. 8,562,157, and a continuation of application
`No. 13/776,091, filed on Feb. 25, 2013, now Pat. No.
`8,591,047, which is a continuation of application No.
`13/590,854, filed on Aug. 21, 2012, now Pat. No. 8,550,642,
`which is a division of application No. 13/336,018, filed on Dec.
`23, 2011, now Pat. No. 8,267,534, which is a 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.
`
`Ex. 1001, 1–2.
`Petitioner alleges the ’026 publication is prior art under 35 U.S.C.
`§ 102(b) because the ’882 patent is not entitled to the May 20, 2003, date of
`the ’872 provisional application, but rather is entitled “only to the actual
`filing date of its ancestor U.S. Patent No. 7,934,843” (“the ’843 patent”).
`Pet. 8. Petitioner further alleges the ’026 publication also 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, which is prior to the earliest possible
`effective filing date of May 20, 2003. Id.
`
`11
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`Patent Owner argues that the issues of (1) whether the ’882 patent is
`entitled to the May 20, 2003, priority 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 were considered repeatedly during prosecution
`of the ’882 patent and its family, and, therefore, we should deny institution
`of the first ground under 35 U.S.C. § 325(d). Prelim. Resp. 7–13, 21–25.
`For the reasons that follow, we agree with Patent Owner that the first and
`second issues were considered by the Patent Office, and we exercise our
`discretion under 35 U.S.C. § 325(d) to decline review of the first ground.
`Prosecution of the ’843 patent and the ’882 patent
`The ’843 patent is an ancestor to the ’882 patent and also lists Niall R.
`Lynam as the sole inventor. Ex. 1008, 1. The ’843 patent is nearly identical
`to the ’882 patent. Compare Ex. 1001, with Ex. 1008.
`During prosecution of the ’843 patent, and on January 13, 2011, the
`Examiner alleged that the claims were not entitled to the benefit of any
`earlier filing date. Ex. 1009, 139–141. Based on that allegation, 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 the ’011
`publication. Id. at 141–155.
`In response, the Applicant of the ’843 patent argued that the ’026
`publication was not prior art under 35 U.S.C. § 102(b) because the
`application was entitled to its earliest 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. 6,522,451 and
`6,717,712.” Id. at 46–49. For similar reasons, the applicant also argued that
`
`12
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`the ’011 publication was not prior art. Id. In addition, a Declaration from
`Niall R. Lynam was submitted. Id. at 53–56. Mr. Lynam declared that the
`invention of the independent claims of the ’045 application (that matured
`into the ’843 patent) was reduced to practice prior to June 13, 2002, referring
`to U.S. Patent No. 6,522,451 as evidence of such fact.10 Id. at 55.
`In response, the Examiner allowed the claims and indicated, among
`other things, 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. at 23 (emphasis added).
`During prosecution of the ’882 patent application, the Examiner
`rejected claims 1–20 under 35 U.S.C. § 103(a) as unpatentable over the ’026
`publication. Ex. 1006, 137–150. The Examiner acknowledged the
`“Applicant’s claim for the benefit of a prior-filed application” (U.S. Patent
`Application No. 12/197,666 (Ex. 1014 (“the ’666 application”), but found
`the disclosure of the ’666 Application (and its parent application and
`provisional application) failed “to provide adequate support or enablement”
`for the claims. Id. at 135–136. The Examiner also found the “earliest-filed
`parent application that provides adequate support and enablement for the
`above claimed features is Application No. 12/851,045,” which was filed on
`August 5, 2010, and found the claims were entitled to that filing date. Id. at
`136.
`
`
`10 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.
`13
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`In response, the Applicant responded by asserting “the presently
`claimed invention of the present application is entitled to its priority claim
`back to the May 20, 2003 filing date of the ’872 provisional application,”
`because the present application and each of the priority applications
`incorporated by reference U.S. Patent Nos. 6,522,451 and 6,717,712. Ex.
`1006, 180. In addition, a Declaration from Niall R. Lynam was submitted,
`which was similar to the one submitted during prosecution of the ’843
`patent. Id. at 184–186. In response, the Examiner allowed the claims. Id. at
`349. In so doing, the Examiner stated:
`The declaration filed on March 17, 2014 under 37 CFR
`1.131(a) is sufficient to overcome the Lynam et al. reference
`(US 2002/0072026 Al), and to demonstrate that Applicant is
`entitled to the benefit of the earlier filing date of prior-filed
`Application No. 12/197,666 (and its parent Application
`10/709,434 and Provisional Application No. 60/471,872).
`
`Id.
`
`
`Discussion
`Petitioner asserts the ’882 patent is entitled to the filing date of the
`’843 patent, but is not entitled to the filing date of the ’666 application
`because the ’666 application does not provide written description support for
`the claims of the ’882 patent. Pet. 8. Although Petitioner acknowledges this
`issue was raised previously, Petitioner argues the Examiner failed to
`“determine whether the ’451 and ’712 patents were incorporated in their
`entireties and whether the combined disclosures supported the claimed
`invention” because the “examiner did not explain her reasoning.” Id. at 18–
`19.
`In particular, Petitioner argues that a passage from the ’666
`
`application does not incorporate by reference U.S. Patent Nos. 6,522,451
`
`14
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`(“the ’451 patent”) and 6,717,712 (“the ’712 patent”) in their entirety to
`provide written description support for the claims in the ’882 patent. Pet.
`21–22.11 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).
`Petitioner argues that the above passage incorporates only the “field of
`view” aspect from the ’451 and ’712 patents applicable to the one-piece
`reflective element 12 described in the ’666 application. Pet. 22. Petitioner
`argues that, by contrast, when Patent Owner intended to incorporate a
`reference into the ’666 application in its entirety, Patent Owner said so. Id.
`(citing Ex. 1014 ¶¶ 1, 45, 46).
`Patent Owner argues that because the Office considered the issue of
`whether the ’882 patent and other patents in the same family are entitled to
`claim priority to provisional application No. 60/471,872, we should exercise
`discretion to not consider such arguments again. Prelim. Resp. 8, 14.
`Specifically, Patent Owner argues that the ’026 publication “is not prior art
`to the ‘882 patent and the question has been considered eight times, by two
`different examiners.” Id. at 14. Moreover, Patent Owner argues that the
`Examiner did not err in determining that the ’666 patent incorporates the
`’451 and ’712 patents in their entirety. Id. at 15–18.
`
`
`11 This is the same passage presented to the Examiner during prosecution of
`both the ’882 and ’843 patents. Ex. 1006, 179–180; Ex. 1009, 46.
`15
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`IPR2018-00533
`Patent 8,783,882 B2
`
`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”). Moreover, 35 U.S.C. § 325(d) states, in relevant part,
`that “[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.”
`We have considered the prosecution history of both the ’843 patent
`and the ’882 patent and determine that the issue of whether the ’882 patent is
`entitled to its earliest effective filing date was considered previously by the
`Office. Indeed, Petitioner appears to acknowledge as much. See, e.g., Pet.
`18–20. Moreover, Petitioner has not presented further sufficient evidence
`here that would persuade us to reach a different conclusion from the
`Examiner’s position that the challenged claims are adequately disclosed in
`the priority applications. In particular, we disagree with Petitioner that the
`above 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
`points out (Prelim. Resp. 15–18), the passage is subject to at least one
`additional interpretation, and we tend to agree with Patent Owner that its
`understanding of the passage is the correct one, especially in light of 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).
`
`16
`
`
`
`IPR2018-00533
`Patent 8,783,882 B2
`
`Moreover, we are not persuaded by 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 ’882 patent’s claims.
`Pet. 25–34. Presumptively, the Examiners who examined the applications
`for the ’843 patent and the ’882 patent both considered whether the ’666
`application provides written description support for the ’882 patent’s claims
`as part of determining that the ’882 patent gets the benefit of its earliest
`filing date. See, e.g., Ex. 1009, 21–23.12 And, as noted above, we find
`persuasive Patent Owner’s arguments (Prelim. Resp. 19–20) 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. Accordingly, Petitioner has not shown the
`Office erred. For all of these reasons, we determine that the issue of whether
`the ’026 publication is prior art under 35 U.S.C. § 102(b) was considered
`extensively by the Office and that Petitioner has failed to show error
`sufficiently in the Office’s previous determinations.
`We next consider Petitioner’s arguments that, even if the ’882 patent
`is entitled to the May 20, 2003, date of the ’872 provisional application, the
`’026 publication qualifies as prior art under 35 U.S.C. §§ 102(a) and (e)
`because the ’026 publication is “by another”—it names three inventors,
`whereas the ’882 patent names a sole inventor. Pet. 8. Petitioner argues that
`during prosecution of the ’882 patent, the issue of whether relevant material
`from the ’026 publication is by the same inventor as the ’882 patent, and,
`
`
`12 By indicating that the affidavit overcame the ’026 publication as prior art,
`the Examiner implicitly agreed that the Applicant had shown sufficiently
`that the claims were entitled to the provisional priority date of May 20, 2003.
`17
`
`
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`IPR2018-00533
`Patent 8,783,882 B2
`
`therefore, not prior art under §§ 102(a) and (e), was not raised before the
`Office. Id. at 15–16.
`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
`was raised previously before the Office. Prelim. Resp. 24–27. In particular,
`Patent Owner argues that the declaration of Dr. Lynam submitted by Patent
`Owner during prosecution of the ’882 patent is “sufficient to show that
`Lynam ’026 was not the work of another because the co-inventors listed in
`Lynam ’026 were not involved in the conception of the subject matter of the
`’882 patent claims, which were solely conceived of by Dr. Lynam.” Id. at
`24. 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. Id. at 12.
`We have considered the prosecution history of both the ’843 patent
`and the ’882 patent along with the Lynam Declarations filed in those cases
`and 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 for the ’882
`application considered a similar Lynam Declaration and also concluded that
`the Declaration “is sufficient to overcome the Lynam et al US 2002/0072026
`reference” presumably for at least the same reasons articulated in the ’843
`patent. For these reasons, we disagree with Petitioner that the Office did not
`previously consider the issue of whether the ’026 publication is by another.
`
`18
`
`
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`IPR2018-00533
`Patent 8,783,882 B2
`
`Indeed, Petitioner does not discuss the prosecution history of the ’843
`patent at all, which we find fatal to Petitioner’s argument that the “same
`inventor” issue was never raised before the Office. As explained above, the
`’843 patent is nearly identical to the ’882 patent. Compare Ex. 1001, with
`Ex. 1008. Moreover, Petitioner’s Ground 1 is nearly identical to the
`rejections made by the Examiner during prosecution of the ’843 patent. Ex.
`1009, 139–150. We find the prosecution history of the ’843 patent relevant
`to Petitioner’s assertions that the Office never previously considered the
`issue of whether the ’026 publication is by the same inventor as the ’882
`patent, and, therefore, not prior art under §§ 102(a) and (e). Petitioner’s
`silence regarding the prosecution history of the ’843 patent is an important
`factor in our considering whether to institute trial here.
`For all of the above 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 ground that those claims are unpatentable under 35 U.S.C. §§ 102(a),
`(b), and (e) as anticipated by the ’026 publication.
`
`F. Ground 2: Asserted Obviousness of Claims 1, 2, 3, 18, and 20
`over Henion, Platzer, Catlin, Silvestre, and Yamabe
`Petitioner contends claims 1, 2, 3, 18, and 20 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Henion, Platzer, Catlin, Silvestre, and
`Yamabe. Pet. 52–81. In support of its showing, Petitioner relies upon the
`testimony of Dr. Jose Sasian (Ex. 1002). Id.
`
`19
`
`
`
`IPR2018-00533
`Patent 8,783,882 B2
`
`1. Henion
`Henion describes an automotive mirror assembly with integral
`lighting. Ex. 1012, Abstract. Henion Figures 2 and 3 are reproduce
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