`Trials@uspto.gov
`571-272-7822 Entered: July 9, 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 IPR2018-00536
`Patent 8,550,642 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)
`
`
`
`
`
`
`
`
`IPR2018-00536
`Patent 8,550,642 B2
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`I. INTRODUCTION
`SMR Automotive Systems USA, Inc. (“Petitioner”)1 filed a Petition
`for inter partes review of claims 1–11 of U.S. Patent No. 8,550,642 B2
`(Ex. 1001, “the ’642 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 1–11 of the
`’642 patent.
`
`A. Related Matters
`The parties indicate that the ’642 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
`’642 patent:
`IPR2018-00491
`IPR2018-00505
`IPR2018-00506
`IPR2018-00517
`IPR2018-00520
`IPR2018-00533
`
`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. 8,147,077 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. 8,783,882 B2
`
`2
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`IPR2018-00536
`Patent 8,550,642 B2
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`IPR2018-00541
`IPR2018-00545
`IPR2018-00931
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`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 ’642 Patent
`The ’642 patent is directed to an exterior rearview 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 ’642 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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`element 314 supported in frame assembly 316. Ex. 1001, 15:61–64.
`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 Claim
`Petitioner challenges claims 1–11 of the ’642 patent. Claims 1 and 7
`are independent claims. Claim 7 is reproduced below.3
`7. 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 primary mirror disposed within said primary opening
`for providing a view rearward of the motor vehicle
`through a primary field of view, said primary mirror
`defining a primary plane;
`[d] a spotting mirror spaced apart from said primary
`mirror, said spotting mirror extending through a
`secondary plane different from said primary plane;
`[e] wherein said spotting mirror is at an angle relative to
`said primary mirror;
`[f] wherein said primary mirror and said spotting mirror
`are supported on a mirror backing plate, and wherein
`said primary mirror is supported at a first portion of
`said mirror backing plate and said spotting mirror is
`supported at a second portion of said mirror backing
`plate;
`
`3 For expediency, Petitioner and Patent Owner both annotate claim 7 into
`limitations 7[a]–[k]. Pet. 73–74; see also, e.g., Prelim. Resp. 43. We adopt
`that format herein for ease of reference.
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`[g] a divider of said backing plate extending between said
`primary mirror and said spotting mirror to separate said
`primary and secondary mirrors visually;
`[h] 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;
`[i] wherein said divider extends from said mirror backing
`plate and demarcates said first portion of said mirror
`backing plate from said second portion of said mirror
`backing plate;
`[j] wherein said first portion of said mirror backing plate,
`said second portion of said mirror backing plate and
`said divider are commonly injection molded to form
`said mirror backing plate; and
`[k] wherein, when supported at said second portion of said
`mirror backing plate, said spotting mirror is tilted
`downwardly with respect to said primary mirror at an
`angle in a range of about 0.75 degrees to about 5
`degrees.
`Id. at 29:7–30:15 (annotations [a]–[k] added).
`
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–11 are unpatentable based on the
`following grounds (Pet. 4):
`Reference(s)
`The ’026 publication4
`Henion,5 Catlin,6
`Platzer,7, and Silvestre8
`
`Challenged Claims
`1–11
`7, 10, and 11
`
`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 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).
`Petitioner does not propose any terms for construction. Pet. 6–7.
`Patent Owner proposes a construction for “backing plate.” Prelim. Resp.
`
`
`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 U.S. Patent No. 5,721,646, issued Feb. 24, 1998 (Ex. 1034, “Catlin”).
`7 PCT International Publication No. WO 01/81956 A1, pub. Nov. 1, 2001
`(Ex. 1013, “Platzer”).
`8 French Republic Patent Application Publication No. 2,650,982, published
`Feb. 22, 1991 (Ex. 1037, “Silvestre”).
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`34–38. 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
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
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`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. The Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). We also are mindful that the level of ordinary skill in the
`art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`Petitioner relies on the testimony of Dr. Jose Sasian, who testifies that
`a person with ordinary skill in the art “will have had at the time of the
`invention a M.Sc. in Optics, Optical Engineering, or similar studies in a
`related field (e.g., Physics or Mechanical Engineering) with 2–3 years of
`experience in the optics/mechanical industry.” Ex. 1002 ¶ 18. Dr. Sasian
`further testifies that his description is approximate and “a higher level of
`education or skill may make up for less experience, and vice-versa.” Id.
`Patent Owner relies on the testimony of Mr. Michael Nranian, who disagrees
`with Dr. Sasian’s assessment and testifies that a person with ordinary skill in
`the art “would have had a M.S. in an engineering discipline relevant to
`automotive component design (e.g., electrical engineering, mechanical
`engineering, or optical engineering), as well as 2–3 years of experience in
`the automotive industry designing components for automobiles.” Ex. 2001
`¶ 26.
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`The levels of ordinary skill proposed by the parties differ 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, 1:27–35 (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. 40–43.
`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
`qualify him as an expert in the pertinent field under Federal Rule of
`Evidence 702. See, e.g., Ex. 1002 ¶¶ 2–12.
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`Patent Owner argues that Dr. Sasian is a “person with an optics
`degree.” Prelim. Resp. 42. 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 1–11 are unpatentable under
`35 U.S.C. §§ 102(a), (b), and (e) as anticipated by the ’026 publication. Pet.
`33–43.
`The ’026 publication is a United States Patent Application
`Publication, filed December 20, 2000, and published June 13, 2002.
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`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
`’642 patent lists Niall R. Lynam as the sole inventor, was filed August 21,
`2012, and contains the following benefit claims:
`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.
`Petitioner alleges the ’026 publication is prior art under 35 U.S.C.
`§ 102(b) because the ’642 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. 7. 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.
`Patent Owner argues that the issues of (1) whether the ’642 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 ’642 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
`
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`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 ’642 patent
`The ’843 patent is an ancestor to the ’642 patent and also lists Niall R.
`Lynam as the sole inventor. Ex. 1008, 1. The ’843 patent is nearly identical
`to the ’642 patent. Compare Ex. 1001, with Ex. 1008.9
`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 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
`
`
`9 On July 17, 2013, the Applicant of the ’642 patent submitted a “Terminal
`Disclaimer with respect to U.S. Patent Nos. 8,128,243 and 7,934,843.” See
`Ex. 1006, 139, 304–305. The terminal disclaimer was approved. Ex. 1006,
`307.
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`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).
`The prosecution history of the ’642 patent is similar to that of the ’843
`patent. The same Examiner rejected claims 1, 2, 4, 5, 7, 8, 10, and 11 under
`35 U.S.C. § 102(e) as anticipated by the ’026 publication instead of under 35
`U.S.C. § 102(b). Ex. 1006, 101–102. Nonetheless, the Applicant responded
`with nearly identical arguments, such as why the application was entitled to
`its earliest date of May 20, 2003, as “the present application and each of the
`priority applications incorporate by reference” U.S. Patent Nos. 6,522,451
`and 6,717,712. Id. at 140–141. 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 144–146. In response, the Examiner
`allowed the claims. Id. at 314–315.
`
`
`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.
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`Discussion
`Petitioner asserts the ’642 patent is entitled to the filing date of the
`’843 patent, but is not entitled to the filing date of U.S. Patent Application
`No. 12/197,666 (Ex. 1014 (“the ’666 application”)), because the ’666
`application does not provide written description support for the claims of the
`’642 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 his reasoning.” Id. at 13–14, 18.
`
`In particular, Petitioner argues that a passage from the ’666
`application does not incorporate by reference U.S. Patent Nos. 6,522,451
`(“the ’451 patent”) and 6,717,712 (“the ’712 patent”) in their entirety to
`provide written description support for the claims in the ’642 patent. Pet.
`21–25.11 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. 21–22.
`
`
`11 This is the same passage presented to the Examiner during prosecution of
`both the ’642 and ’843. Ex. 1006, 140; Ex. 1009, 46.
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`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. at 22 (citing Ex. 1014 ¶¶ 1, 45, 46).
`Patent Owner argues that because the Office considered the issue of
`whether the ’642 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. 11, 14–17.
`Specifically, Patent Owner argues that the ’026 publication “is not prior art
`to the ‘642 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 patent incorporates the
`’451 and ’712 patents in their entirety. Id. at 14.
`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 ’642 patent and determine that the issue of whether the ’642 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.
`14–15. Moreover, Petitioner has not presented further sufficient evidence
`here that would persuade us to reach a different conclusion from the
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`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. 17–21), 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).
`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 ’642 patent’s claims.
`Pet. 25–32. Presumptively, the Examiner who examined the applications for
`both the ’843 patent and the ’642 patent considered whether the ’666
`application provides written description support for the ’642 patent’s claims
`as part of determining that the ’642 patent gets the benefit of its earliest
`filing date. See, e.g., Ex. 1009, 21–23.12 And 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
`
`
`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.
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`Petitioner. Accordingly, Petitioner has not shown the Examiner 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 sufficiently show error in the
`Office’s previous determinations.
`We next consider Petitioner’s arguments that even if the ’642 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 ’642 patent names a sole inventor. Pet. 7. Petitioner argues that
`during prosecution of the ’642 patent, the issue of whether relevant material
`from the ’026 publication is by the same inventor as the ’642 patent, and,
`therefore, not prior art under §§ 102(a) and (e), was not raised before the
`Office. Id. at 14–15.
`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. 21–25. In particular,
`Patent Owner argues that the declaration of Dr. Lynam submitted by Patent
`Owner during prosecution of the ’642 patent is “sufficient to show that
`Lynam ‘026 was not the work of another because the co-inventors listed [i]n
`Lynam ‘026 were not involved in the conception of the subject matter of the
`‘642 patent claims, which were solely conceived of by Dr. Lynam.” Id. at
`22. 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 14.
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`We have considered the prosecution history of both the ’843 patent
`and the ’642 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 same Examiner
`considered a similar Lynam Declaration during the ’642 application and
`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, that Lynam conceived or invented the subject
`matter disclosed in the patent application publication, e.g., the ’026
`publication. Ex. 1006, 314. For these reasons, we disagree with Petitioner
`that the Office did not previously consider the issue of whether the ’026
`publication is by another.
`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 ’642 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 ’642
`patent, and, therefore, not prior art under §§ 102(a) and (e). Petitioner’s
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`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 1–11
`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 7, 10, and 11 over
`Henion, Platzer, Catlin, and Silvestre
`Petitioner contends claims 7, 10, and 11 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Henion, Platzer, Catlin, and Silvestre.
`Pet. 44–69. In support of its showing, Petitioner relies upon the testimony of
`Dr. Jose Sasian (Ex. 1002). Id.
`
`1. Henion
`Henion describes a rear-view mirror with integral lighting. Ex. 1012,
`Abstract. Henion Figures 2 and 3 are reproduced below.
`
`
`Henion Figures 2 and 3, reproduced above, show a rearview mirror
`assembly. Ex. 1012, 2:5–7, 9–11.
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`As seen from the above, Henion Figures 2 and 3 show a mirror
`assembly 10 with a housing 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 support first reflective element 32 movably within
`the opening. Id. at 6:1–4. Backing plate also supports second reflective
`element 36 as well as various light structures. Id. at 6:7–13. Second
`reflective element 36 is preferably a convex shape and is referred to as a
`spotter mirror or fisheye mirror for providing a wide angle of view of the
`area rearward and sideward of the vehicle. Id. at 6:13–17.
`
`2. Platzer
`Platzer describes a rearview mirror with a main viewing mirror and an
`auxiliary blindzone viewing mirror juxtaposed to expose the vehicle
`blindzone to the operator. Ex. 1013, Abstract.
`
`3. Catlin
`Catlin describes a rearview mirror for vehicles for use on larger
`vehicles. Ex. 1034, 1:5–9. Mirror element 12 and heating element 14 are
`supported and adhered to support plate 24. Id. at 5:22–24, Fig. 3. Support
`plate is “preferably injection molded from a resinous pl